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pdfSUPPORTING STATEMENT
United States Patent and Trademark Office
Patent Review and Derivation Proceedings
OMB CONTROL NUMBER 0651-0069
Supporting Statement for Final Rules 0651-AC70, AC71, AC74, and AC75
August 3, 2012
A.
Justification
1.
Necessity of Information Collection
The Leahy-Smith America Invents Act (“AIA”), 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 as 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 AIA 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:
“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), and “Transitional Program for Covered Business Method
Patents – Definition of Technological Invention” (RIN 0651-AC75).
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. In addition, the USPTO has
consolidated the six notices of proposed rulemaking into four final rulemakings, as
described in the following paragraphs.
The final 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)
adopts new rules of practice that provide for a consolidated set of rules for the new trial
procedures and provides 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 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 final rulemaking titled “Changes to Implement Inter Partes Review Proceedings, PostGrant Review Proceedings, and Transitional Program for Covered Business Method
Patents” (RIN 0651-AC71) adopts new rules of practice to implement the new inter partes
review proceedings, post-grant review proceedings, and transitional post-grant review
proceedings for covered business method patents review proceedings provided for by the
AIA.
For the new petition for inter partes review, the final rules set forth the requirements for
filing the petitions, for filing responses to such petitions, and for filing motions, replies, and
oppositions after such a review has been instituted. These provisions of the AIA take
effect on September 16, 2012, and apply to any patent issued before, on, or after the
effective date.
For the new post-grant review proceedings, the final rules set forth the requirements for
filing the new petitions, for filing responses to such petitions, and for filing motions, replies,
and oppositions after such a review has been instituted. These provisions of the AIA take
effect on September 16, 2012, and generally apply to patents issuing from applications
subject to the first-inventor-to-file provisions of the AIA.
For the new transitional post-grant review proceedings for covered business method
patents, the final rules set forth the requirements for filing the new petition. These
provisions of the AIA 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.
For derivation proceedings, the umbrella rules set forth general requirements, and the final
rulemaking titled “Changes to Implement Derivation Proceedings” sets forth the specific
requirements. These provisions of the AIA take effect on March 16, 2012. Additionally, the
umbrella rules contain rules of procedure for additional practice before the PTAB. These
provisions take effect September 16, 2012.
The final rulemaking titled “Transitional Program for Covered Business Method Patents –
Definitions of Covered Business Method Patent and Technological Invention” (RIN 0651AC75) adopts requirements for determining if a patent is for a technological invention.
Patents for technological inventions cannot be reviewed under the new transitional postgrant review proceedings for covered business method patents provided for by the AIA.
The supporting statement associated with the notices of proposed rulemaking was
submitted to OMB for review on February 9, 2012. On March 27, 2012, OMB filed a
comment on the proposed rule submission and requested that the USPTO resubmit the
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supporting statement when the proposed rules were finalized. Therefore, in support of
these final rulemakings and the changes made to them since the publication of the
proposed rulemakings, the USPTO is resubmitting this information collection request to
OMB to seek approval for the new information collection requirements provided for in these
rulemakings and to establish a new information collection titled “Patent Review and
Derivation Proceedings.” 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.
Table 1 provides the specific statutes and regulations requiring the USPTO to collect the
information discussed above:
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 Initial 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 Initial 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
Request for Reconsideration
Motions, Replies and Oppositions in
Derivation Proceeding
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Request for Oral Hearing
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 (Parties in
Litigation over Patent)
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(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
Settlement (Parties not in Litigation)
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)
2.
Needs and Uses
The public will use this new information collection to petition the Board to seek institution
of, and to participate in, inter partes reviews, post-grant reviews, covered business method
patent reviews, and derivation proceedings that are set forth in the final rulemakings and
provided for by the AIA.
In addition to the adopted rules, the USPTO has also developed a Trial Practice Guide that
provides different scenarios based on the proposals in the rulemakings. A copy of the
revised Trial Practice Guide will be available on the USPTO Internet Web site at
www.uspto.gov.
The Board will use the information collected under these final rulemakings 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.
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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.
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.
Table 2 outlines how this collection of information is used by the public and the USPTO:
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
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.
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Form and Function
Petition for Derivation
Form #
No Form
Associated
Needs and Uses
Reply to Petition for Initial Inter
Partes Review
No Form
Associated
Reply to Petition for Initial PostGrant Review or Covered
Business Method Patent Review
No Form
Associated
Request for Reconsideration
No Form
Associated
Motions, Replies and Oppositions
After Institution in Inter Partes
Review
No Form
Associated
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
post-grant review or covered business method review.
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.
No Form
Associated
Motions, Replies and Oppositions
in Derivation Proceeding
No Form
Associated
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.
Motions, Replies and Oppositions
After Institution in Post-Grant
Review or Covered Business
Method Review
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 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 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.
6
Form and Function
Form #
Request for Oral Hearing
No Form
Associated
Request to Treat a Settlement as
Business Confidential
No Form
Associated
Needs and Uses
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 (Parties in Litigation
over Patent)
No Form
Associated
Settlement (Parties not in
Litigation)
No Form
Associated
Arbitration Agreement and Award
No Form
Associated
Request to Make a Settlement
Agreement Available
No Form
Associated
Notice of Judicial Review of a
Board Decision (e.g., Notice of
Appeal Under 35 U.S.C. § 142)
No Form
Associated
3.
Used by a party to concede the contest.
Used by the Board to render judgment against the party conceding
the contest.
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.
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 final rulemakings, all of the patent review and derivation proceeding papers will
be filed electronically, unless otherwise authorized by the Board. 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 adopted 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.
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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 reviews, 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 relied upon in the proceedings, 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 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 petitioner, patent applicant, or patent owner,
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 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 adopted 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. Public comments were received in response to
these rules.
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“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) (77 Fed.
Reg. 6879) on February 9, 2012
“Changes to Implement Inter Partes Review Proceedings” (RIN 0651-AC71) (77
Fed. Reg. 7041) on February 10, 2012
“Changes to Implement Post-Grant Review Proceedings” (RIN 0651-AC72) (77 Fed.
Reg. 7060) on February 10, 2012
“Changes to Implement Transitional Program for Covered Business Method
Patents” (RIN 0651-AC73) (77 Fed. Reg. 7080) on February 10, 2012
“Changes to Implement Derivation Proceedings” (RIN 0651-AC74) (77 Fed. Reg.
7028) on February 10, 2012
“Transitional Program for Covered Business Method Patents – Definition of
Technological Invention” (RIN 0651-AC75) (77 Fed. Reg. 7095) on February 10,
2012.
The USPTO fully considered the comments received in response to those proposed
rulemakings in developing the final rules.
“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, Post-Grant Review
Proceedings, and Transitional Program for Covered Business Method Patents”
(RIN 0651-AC71)
“Changes to Implement Derivation Proceedings” (RIN 0651-AC74)
“Transitional Program for Covered Business Method Patents – Definitions of
Covered Business Method Patent and Technological Invention (RIN 0651-AC75)
The USPTO has consulted with the public about the AIA in general through the agency
microsite at http://www.uspto.gov/aia_implementation/index.jsp.
The USPTO has long-standing relationships with groups from whom patent application
data is collected, such as the American Intellectual Property Law Association (AIPLA), as
well as patent bar associations, independent inventor groups, and users of our public
facilities. Views expressed by these groups are considered in developing proposals for
information collection requirements.
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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 proceeding would be available to the public. See 35 U.S.C.
§§ 122, 316(a)(1), and 326(a)(1). In the final 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 USPTO adopts rules that provide for protective orders governing the
exchange and submission of confidential information in Board proceedings. In 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
rules, the petitioner must file with the petition, but need not serve the patent owner with 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 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 37 CFR 42.56, the Board outlines when the confidential information that is subject to a
protective order would become public. The Board envisions that this proposal would
balance the needs of the 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 will 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 this rule
would encourage parties to redact sensitive information when possible rather than sealing
the entire document.
In the final rulemaking titled “Changes to Implement Inter Partes Review Proceedings,
Post-Grant Review Proceedings, and Transitional Program for Covered Business Method
Patents,” 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.
11.
Justification for Sensitive Questions
None of the required information in this collection is considered to be sensitive.
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12.
Estimate of Hour and Cost Burden to Respondents
Table 3a 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 5,059 responses per year for this
collection, with approximately 1,608 of these responses submitted by small entities. Out of
these 5,059 responses, the USPTO estimates that only 4 responses will be submitted in
paper, while the rest will be submitted electronically.
These estimates are based on the Agency’s long-standing institutional knowledge of and
experience with the type of information collected by these items.
Burden Hour Calculation Factors
The USPTO estimates that it will take the public between approximately 6 minutes and
approximately 165 hours and 18 minutes (0.10 to 165.3 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 review and the motions/replies/oppositions filed in review that are
filed in paper as it does to complete those filed electronically.
These estimates are based on the Agency’s long-standing institutional knowledge of and
experience with the type of information collected and the length of time necessary to
complete responses containing similar or like information.
Cost Burden Calculation Factors
The USPTO uses a professional rate of $371 per hour for respondent cost burden
calculations, which is the mean 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). Based on the
Agency’s long-standing institutional knowledge of and experience with the type of
information collected, the Agency believes $371 is an accurate estimate of the cost per hour
to collect this information.
Table 3a: Burden Hour/Burden Cost to Respondents for Patent Review and Derivation Proceedings
Item
Petition for Inter Partes Review
Hours
(a)
Responses
(yr)
(b)
Burden
(hrs/yr)
(c)
(a) x (b)*
Rate
($/hr)
(d)
Total Cost
($/hr)
(e)
(c) x (d)
124
456
56,544
$371.00
$20,977,824.00
Petition for Post-Grant Review or Covered
Business Method Patent Review
165.3
73
12,067
$371.00
$4,476,857.00
Petition for Derivation
165.3
50
8,265
$371.00
$3,066,315.00
Reply to Petition for Initial Inter Partes Review
91.6
401
36,732
$371.00
$13,627,572..00
Reply to Petition for Initial Post-Grant Review or
Covered Business Method Patent Review
91.6
64
5,862
$371.00
$2,174,802.00
11
Item
Hours
(a)
Responses
(yr)
(b)
Burden
(hrs/yr)
(c)
(a) x (b)*
Rate
($/hr)
(d)
Total Cost
($/hr)
(e)
(c) x (d)
Request for Reconsideration
80.0
156
12,480
$371.00
$4,630,080.00
Motions, Replies and Oppositions After Institution
in Inter Partes Review
140.0
2,166
303,240
$371.00
$112,502,040.00
Motions, Replies and Oppositions After Institution
in Post-Grant Review or Covered Business
Method Review
130.0
460
59,800
$371.00
$22,185,800.00
Motions, Replies and Oppositions in Derivation
Proceeding
120.0
180
21,600
$371.00
$8,013,600.00
Request for Oral Hearing
18.3
484
8,857
$371.00
$3,285,947.00
Request to Treat a Settlement as Business
Confidential
2.0
22
44
$371.00
$16,324.00
Request for Adverse Judgment, Default Adverse
Judgment or Settlement (parties in litigation over
patent)
1.0
85
85
$371.00
$31,535.00
100.0
33
3,300
$371.00
$1,224,300.00
Arbitration Agreement and Award
4.0
2
8
$371.00
$2,968.00
Request to Make a Settlement Agreement
Available
1.0
22
22
$371.00
$8,162.00
Notice of Judicial Review of a Board Decision
(e.g., Notice of Appeal Under 35 U.S.C. §142)
0.1
405
41
$371.00
$15,211.00
5,059
528,947
---------------
$196,239,337.00
Settlement (Parties not in Litigation)
Totals
-----------
* Note: Where applicable, burden hour sums have been rounded to the nearest whole number as explained in
Section 15 below.
Table 3b shows the impact of the rulemaking and non-rulemaking changes to the burden
estimates for this information collection:
Table 3b: Burden Changes – Rulemaking/Non-Rulemaking Impact
Current Inventory
Rulemaking Impact
Non-rule Impact
New Proposed
Burden Estimate
Responses
0
Increase of 5,059
0
5,059
Burden Hours
0
Increase of 528,947
0
528,947
$0
Increase of $196,239,337
0
$196,239,337.00
Respondent Cost Burden
13.
Total Annual (Non-hour) Cost Burden
The USPTO estimates that the rulemakings related to this information collection will add
annual (non-hour) costs of$17,427,196 to this collection, of which $17,427,120 will be filing
fees and $76 will be postage costs, as implemented in “Rules of Practice for Trials Before
the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board
12
Decisions” (RIN 0651-AC70). As described in Section 15, the (non-hour) cost for AC75 is
entirely included in the amount reported for AC71. Similarly, the (non-hour) cost for AC71
and the (non-hour) cost for AC74 are entirely included in the amount reported for AC70.
The amount for AC70 also includes the estimated amount for the derivation proceedings
and notices of appeal and elections under part 90 for other proceedings.
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, motions
filed by small entity patent owners in inter partes review with excess claims, motions filed
by small entity patent owners in post-grant review or covered business method patent
review with excess claims, and requests to make a settlement agreement available. The
USPTO estimates that the total filing fees associated with this collection will be
approximately $17,427,120 per year, as calculated in Table 4a below.
Table 4a: 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)
456
$31,400.00
(average)
$14,318,400.00
Petition for Post-Grant Review or Covered Business Method Patent
Review
73
$41,400.00
(average)
$3,022,200.00
Petition for Derivation
50
$400.00
$20,000.00
401
$0.00
$0.00
64
$0.00
$0.00
156
$0.00
$0.00
Motions, Replies and Oppositions After Initiation in Inter Partes
Review with no Excess Claims
2,086
$0.00
$0.00
Motions in Inter Partes Review with Excess Claims by Small Entity
Patent Owners
26
$370.00
$9,620.00
Motions in Inter Partes Review with Excess Claims by Other than
Small Entity Patent Owners
54
$740.00
$39,960.00
Motions, Replies and Oppositions After Initiation in Post-Grant
Review or Covered Business Method Patent Review with no
Excess Claims
447
$0.00
$0.00
Motions in Post-Grant Review or Covered Business Method Patent
Review with Excess Claims by Small Entity Patent Owners
4
$370.00
$1,480.00
Motions in Post-Grant Review or Covered Business Method Patent
Review with Excess Claims by Other than Small Entity Patent
Owners
9
$740.00
$6,660.00
Motions, Replies and Oppositions in Derivation Proceeding
180
$0.00
$0.00
Request for Oral Hearing
484
$0.00
$0.00
22
$0.00
$0.00
Reply to Petition for Initial Inter Partes Review
Reply to Petition for Initial Post-Grant Review or Covered Business
Method Patent Review
Request for Reconsideration
Request to Treat a Settlement as Business Confidential
13
Item
Request for Adverse Judgment, Default Adverse Judgment or
Settlement (includes both parties in litigation over a patent and
parties not in litigation)
Responses
(yr)
(a)
118
$0.00
Total Cost
(yr)
(a x b)
$0.00
2
$0.00
$0.00
22
$400.00
$8,800.00
405
$0.00
$0.00
5,059
--------------------
$17,427,120.00
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
Filing Fees
(b)
There are also postage costs associated with these final 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
estimates 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 $18.95. The USPTO estimates that the
total postage cost associated with this collection will be approximately $76 per year, as
calculated in Table 4b below.
Table 4b: 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
$18.95
$19.00
Motions, Replies and Oppositions After Institution in Inter Partes
Review
3
$18.95
$57.00
Totals
4
......
$76.00
Table 4c shows the impact of the rulemaking and non-rulemaking changes to the annual
(non-hour) cost burden estimates for this information collection:
Table 4c: Annual (Non-hour) Cost Burden Changes – Rulemaking/Non-Rulemaking Impact
Current Inventory
Rulemaking Impact
Non-rule Impact
New Proposed
Burden Estimate
Fees
0
Increase of $17,427,120
0
$17,427,120
Postage
0
Increase of $76
0
$76
14
Total Annual (Non-hour)
Cost Burden
0
Increase of $17,427,196
0
$17,427,196
The total annual (non-hour) respondent cost burden for this collection in the form of
filing fees ($17,427,120) and postage costs ($76) is approximately $17,427,196 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
hourly rate (with benefits and overhead) for an administrative patent judge is $258.32,
based upon the administratively determined pay scale. The current hourly rate for a GS15, 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 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 + $20.16).
Estimates are based upon agency long-standing institutional knowledge of and experience
with processing the type of information collected and the length of time necessary to
process similar or like information.
Table 5 calculates the burden hours and costs to the Federal Government for processing
this information collection:
Table 5: Burden Hour/Burden Cost to the Federal Government for Patent Review and Derivation
Proceedings
Item
Hours
(a)
Responses
(yr)
(b)
Burden
(hrs/yr)
(c)
(a x b)*
Rate
($/hr)
(d)
Total Cost
($/yr)
(e)
(c x d)
Petition for Inter Partes Review
40.0
456
18,240
$258.32
$4,711,757.00
Petition for Post-Grant Review or Covered Business
Method Patent Review
53.0
73
3,869
$258.32
$999,440.00
Petition for Derivation
53.0
50
2,650
$258.32
$684,548.00
Reply to Petition for Initial Inter Partes Review
12.0
401
4,812
$258.32
$1,243,036.00
Reply to Petition for Initial Post-Grant Review or
Covered Business Method Patent Review
14.0
64
896
$258.32
$231,455.00
15
Item
Hours
(a)
Responses
(yr)
(b)
Burden
(hrs/yr)
(c)
(a x b)*
Rate
($/hr)
(d)
Total Cost
($/yr)
(e)
(c x d)
Request for Reconsideration
16.0
156
2,496
$258.32
$644,767.00
Motions, Replies and Oppositions After Institution in
Inter Partes Review
13.0
2,166
28,158
$258.32
$7,273,775.00
Motions, Replies and Oppositions After Institution in
Post-Grant Review or Covered Business Method
Review
14.0
460
6,440
$258.32
$1,663,581.00
Motions, Replies and Oppositions in Derivation
Proceeding
14.0
180
2,520
$258.32
$650,966.00
Request for Oral Hearing
3.75
484
1,815
$258.32
$468,851.00
1.0
22
22
$258.32
$5,683.00
Request for Adverse Judgment, Default Adverse
Judgment or Settlement (Parties in Litigation over
Patent)
0.25
85
21
$258.32
$5,425.00
Settlement (Parties not in Litigation)
0.25
33
8
$258.32
$2,067.00
Arbitration Agreement and Award
0.50
2
1
$258.32
$258.00
Request to Make a Settlement Agreement Available
1.0
22
22
$258.32
$5,683.00
Notice of Judicial Review of a Board Decision (e.g.,
Notice of Appeal Under 35 U.S.C. § 142)
0.10
405
41
$87.37
$3,582.00
------------
5,059
72,011
------------
$18,594,874.00
Request to Treat a Settlement as Business
Confidential
Totals
* Note: Where applicable, burden hour sums have been rounded to the nearest whole number as discussed in
Section 15 below.
15.
Reason for Changes in the Annual Burden
The USPTO originally submitted this new information collection request in support of six
notices of proposed rulemaking (RINS 0651-AC70 through AC75) to OMB for review on
February 9, 2012. The USPTO estimated that the collection would have 4,967 responses,
559,648 burden hours, $190,280,320 in respondent costs, and $18,851,073 in annual
(non-hour) costs associated with it. On March 27, 2012, OMB filed a comment on the
proposed rule and requested that USPTO resubmit the information collection request when
the proposed rules were finalized.
Based on comments from the public, the USPTO made various changes to the rules which
altered the information requirements and the burden hours/burden costs associated with
the proposed rules. Moreover in view of a reduction in the growth of inter partes
reexamination requests in fiscal year 2012 to date, the estimate of the number of inter
partes review petitions has been reduced. Therefore, the USPTO is submitting this
16
updated information request in support of the final rulemakings which outline changes in
the rules of practice in proceedings before the Patent Trial and Appeal Board. These
changes are provided for by the AIA. These final 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, Post-Grant Review
Proceedings, and Transitional Program for Covered Business Method Patents”
(RIN 0651-AC71)
“Changes to Implement Derivation Proceedings” (RIN 0651-AC74)
“Transitional Program for Covered Business Method Patents – Definitions of
Covered Business Method Patent and Technological Invention” (RIN 0651AC75)
The USPTO continues to estimate that this collection will have a total of 5,059 responses,
528,947 burden hours, and $196,239,337 in respondent costs associated with it.
The responses, burden hours, and respondent cost burdens for each of the rulemakings
are intertwined. The final rule “Rules of Practice for Trials Before the Patent Trial and
Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions” (RIN 0651AC70) reports all of the PRA burdens across all of the AIA rules regarding Board
proceedings. This includes not only inter partes review proceedings, post-grant review
proceedings, and the proceedings for the transitional program for covered business
methods, but also derivation proceedings as well as notices of appeal and elections under
part 90. The final rule “Changes to Implement Inter Partes Review Proceedings, PostGrant Review Proceedings, and Transitional Program for Covered Business Methods” (RIN
0651-AC71) implements only inter partes review proceedings, post-grant proceedings, and
proceedings for the transitional program for covered business methods. Thus, the
responses, burden hours, and respondent cost burden stated in the final rule for these
proceedings are a subset of the responses, burden hours, and respondent cost burden in
RIN 0651-AC70. Similarly, the final rule “Transitional Program for Covered Business
Method Patents – Definitions of Covered Business Method Patent and Technological
Invention” (RIN 0651-AC75) only concerns the review transitional program for covered
business method proceedings and the final rule “Changes to Implement Derivation
Proceedings” (RIN 0651-AC74) only concerns the derivation proceedings. Thus, the
responses, burden hours, and respondent cost burden stated in these final rules are a
subset of RIN 0651-AC70 and AC71. The data across all of the final rules is summarized
in Table 6 below.
Table 6 shows the changes between these rules:
17
Table 6: Responses, Burden Hours, and Respondent Costs Across the Final Rules
Final Rulemaking
Responses Burden
Respondent
Respondent NonHours
Hour Cost
Hour Cost
RIN 0651-AC70
5,059
528,946.6 $196,239,188.60 $17,427,196.00
Derivation Information
262
31,271.9
$11,601,874.90
$20,800.00
Requirements in 0651-AC70/
0651-AC74
Part 90 Requirements for Other 256
25.6
$9,497.60
0.00
Proceedings in 0651-AC70
RIN 0651-AC71
4,541
497,649.1 $184,627,816.10 $17,406,396.00
RIN 0651-AC75
486
54,827.2
$20,340,891.20
$2,076,350.00
The data in Table 6 were calculated using unrounded numbers. The reported burden
hours for AC70 in this supporting statement was rounded up from 528,946.6 to 528,947,
which resulted in a reported increase in respondent hour cost from $196,239,188.60 to
$196,239,337.00.
Therefore, the USPTO estimates that a total of 5,059 responses and 528,947 burden
hours will be added to the USPTO’s current information collection inventory per year
as a program change.
The USPTO estimates that a total of $17,427,196 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.
B.
COLLECTION OF INFORMATION EMPLOYING STATISTICAL METHODS
This collection of information does not employ statistical methods.
18
| File Type | application/pdf |
| File Title | SF-83 SUPPORTING STATEMENT |
| Author | USPTO |
| File Modified | 2012-08-03 |
| File Created | 2012-08-03 |