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 (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. The United States Patent and Trademark Office (USPTO) submitted this information collection to the Office of Management and Budget (OMB) for review in support of six notices of proposed rulemaking (RINS 0651-AC70, AC71, AC72, AC73, AC74, and AC75) on February 9, 2012. OMB filed a comment on the proposed rule on March 27, 2012. Based on comments from the public, the USPTO made various changes to the rules, including providing for agreements by the parties to alter certain default aspects of the proceedings without seeking authorization from the Board, clarifying the applicability of statutory fees when patent owners present excess claims, and including an information item, "Settlement (Parties not in Litigation)." The USPTO also estimates that, because many disputes may be resolved by the parties without submissions of motions to the Board, the overall estimated burden hours associated with the final rules is reduced which leads to a reduction in total respondent burden cost. Therefore, the USPTO is resubmitting this new information collection in support of three consolidated final rulemakings (RINs 0651-AC70, AC71, and AC75). Requirements in common for the new trial proceedings are adopted in RIN 0651-AC70, thus most of the information collection requirements are based on requirements in that notice. RINs 0651-AC71 and AC75 provide details of certain proceedings and specific aspects of the requirements in those proceedings.
The USPTO is submitting this new information collection request in support of three final rulemakings (RINs 0651-AC70, AC71, and AC75) which outline changes in the rules of practice in proceedings before the Patent Trial and Appeal Board. These changes are provided for by the Leahy-Smith America Invents Act. The USPTO estimates that these final rulemakings will add 5,059 responses and 528,947 burden hours per year to the USPTO's information collection inventory. In addition, the USPTO also estimates that these final rulemakings will add a total of $17,427,196 in annualized (non-hour) costs per year for filing fees and postage to the USPTO's information collection inventory.
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:
(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;
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.
0651-0069 (AC 70 AC 71 AC74 AC 75) SupStmt FINAL Aug 3 2012.pdf
Settlement (Parties not in Litigation)