The USPTO is required by 35 U.S.C. §§ 131 and 151 to examine applications and, when appropriate, issue applications as patents. These statutes also provide for consideration of trial reviews of patents if requested. This collection of information covers the patent review process and related proceedings conducted by the Patent Trial and Appeal Board. The Leahy-Smith America Invents Act ("AIA"), which was enacted into law on September 16, 2011, provided for many changes to the procedures of the Patent Trial and Appeal Board ("PTAB" or "Board," formerly the Board of Patent Appeals and Interference). See Pub. L. 112-29, 125 Stat. 284 (2011). These changes included the introduction of inter partes review, post-grant review, derivation proceedings, and the transitional program for covered business method patents.
Inter partes review is a trial proceeding conducted at the Board to review the patentability of one or more claims in a patent only on a ground that could be raised under §§ 102 or 103, and only on the basis of prior art consisting of patents or printed publications. Post grant review is a trial proceeding conducted at the Board to review the patentability of one or more claims in a patent on any ground that could be raised under § 282(b)(2) or (3). A derivation proceeding is a trial proceeding conducted at the Board to determine whether (i) an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner's application, and (ii) the earlier application claiming such invention was filed without authorization. The transitional program for covered business method patents (TPCBM) is a trial proceeding conducted at the Board to review the patentability of one or more claims in a covered business method patent. In 2012, six rulemaking actions were taken to propose and implement new rules of practice for the multiple reviews and proceedings impacted by the items contained within this information collection.
This renewal seeks to enable the continuation of the review and proceeding processes outlined in the information collection.
Due to an adjustment in the way that the Patent Trial Appeal Board tracks and collects settlements from parties involved in matters before or connected to the board, the "Settlement (Parties not in Litigation)" item has been removed from this collection while the "Settlement" IC item remains. As a result, the responses and annual time burden (hr) decreased accordingly.
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 CWS Nov 2017.docx
0651-USPTO-Information-Quality-Guidelines-Dec2009.pdf
Notice of Judicial Review of a Board Decision (e.g., Notice of Appeal Under 35 U.S.C. 142)