January 2016 0651-0063 Change Worksheet

JUSTIFICATION OF NONMATERIAL/NONSUBSTANTIVE CHANGE

Patent Trial and Appeal Board (PTAB) Action

OMB Control Number 0651-0063

Background

The United States Patent and Trademark Office (USPTO) is submitting this request to update the current inventory of information collection 0651-0033 Patent Trial and Appeal Board (PTAB) Action. The fees in 0651-0063 had been moved into collection 0651-0072 America Invents Act Section 10 Patent Fee Adjustments (approved by OMB in January, 2013). This request is to return these fees to 0651-0063 from 0651-0072 to provide appropriate accounting of the fees with the discontinuation of 0651-0072.

This request is only to return the affected fees to the annual (non-hour) cost burden. The table below details the fees that have been moved to 0651-0063 and are to be removed from 0651-0072, pending its discontinuation.

Fees for Respondents – Annual (Non-hour) Cost Burden

Item	Responses	Cost
0063 Filing a Brief in Support of an Appeal	22,731	$0.00
0063 Filing a brief in support of an appeal in an inter partes reexamination proceeding	774	$1,380,500.00
0063 Forwarding an Appeal in an Application or Ex Parte Reexamination Proceeding to the Board	14,574	$25,278,000.00
00XX For each additional invention to be examined (see 37 CFR 1.19 (b))	5	$4,200.00
00XX Notice of appeal	40,230	$28,512,400.00
00XX request for oral hearing	1,521	$1,746,875.00
Total	79,735	$56,921,975.00

Summary of Changes

The addition of $56,921,975 in fees to collection 0651-0063 is to account for these fees following the discontinuation of collection 0651-0072.

Changes in Burden

Burden Type	Currently Approved	Proposed Change	New Estimate
Responses	0	79,735	79,735
Fees	$0.00	$56,921,975.00	$56,921,975.00

Adding these fees to 0651-0063 (that are currently accounted for in the discontinued 0651-0072) will increase the annual (non-hour) cost estimates originally reported for in the renewal.

Consequently, this collection takes a net burden increase of $56,921,975 in annual (non-hour) costs as a program change.

The 0651-0063 revised total burden is as follows:

• 79,735 responses

• $56,921,975 in annual (non-hour) fees