0069 Patent Fee Review 2019

JUSTIFIATION FOR NONMATERIAL/NONSUBSTANTIVE CHANGE

Patent Review and Derivation Proceedings

OMB Control Number 0651-0069

Background

The United States Patent and Trademark Office (USPTO) administers the Leahy-Smith America Invents Act (AIA), which sets or adjusts patent fees established, authorized, or charged under Title 35, United States Code (U.S.C.). Section 10 prescribes that fees may be set or adjusted only to recover the aggregate estimated costs to the Office for processing, activities, services, and materials related to the patent and trademark processes. Section 10 authorities also includes flexibility to set individual fees in a way that furthers key policies factors, while taking into account the cost of the respective services.

This request is to update the fees attached to collection 0651-0069 (Patent Review and Derivation Proceedings) that are affected by the rulemaking NPRM RIN 0651-AD31 (84 FRN 37398). There are ten fees being adjusted as a result of the 2019 Patent Biennial Fee Review.

Table 1: Proposed Fee

IC #	Item	Current Fees	Proposed Fees	Changes in Fees
1	Inter Partes Review Request Fee - Up to 20 Claims	$15,500	$19,500	$4,000
1	Inter Partes Post-Institution Fee - Up to 20 Claims	$15,000	$18,750	$3,750
1	Inter Partes Review Request of Each Claim in Excess of 20	$300	$375	$75
1	Inter Partes Post-Institution Request of Each Claim in Excess of 20	$600	$750	$150
2	Post-Grant of Covered Business Method Review Request Fee – Up to 20 Claims	$16,000	$20,000	$4,000
2	Post-Grant or Covered Business Method Review Post-Institution Fee – Up to 15 Claims	$22,000	$27,500	$5,500
2	Post-Grant or Covered Business Method Review Request of Each Claim in Excess of 20	$375	$475	$100
2	Post-Grant or Covered Business Method Review Post-Institution Fee of Each Claim in Excess of 15	$825	$1,050	$225
3	Petition for Derivation	$400	$420	$20
14	Request to Make a Settlement Agreement Available	$400	$420	$20

Table 2: Proposed Burden

IC #	Item	Responses	Proposed Fees	Proposed Cost
1	Inter Partes Review Request Fee - Up to 20 Claims	1,560	$19,500.00	$30,420,000.00
1	Inter Partes Post-Institution Fee - Up to 20 Claims	1,569	$18,750.00	$29,418,750.00
1	Inter Partes Review Request of Each Claim in Excess of 20	3,390	$375.00	$1,271,250.00
1	Inter Partes Post-Institution Request of Each Claim in Excess of 20	1,768	$750.00	$1,326,000.00
2	Post-Grant of Covered Business Method Review Request Fee – Up to 20 Claims	92	$20,000.00	$1,840,000.00
2	Post-Grant or Covered Business Method Review Post-Institution Fee – Up to 15 Claims	92	$27,500.00	$2,530,000.00
2	Post-Grant or Covered Business Method Review Request of Each Claim in Excess of 20	635	$475.00	$301,625.00
2	Post-Grant or Covered Business Method Review Post-Institution Fee of Each Claim in Excess of 15	925	$1,050.00	$971,250.00
3	Petition for Derivation	12	$420.00	$5,040.00
14	Request to Make a Settlement Agreement Available	1	$420.00	$420.00
	Totals	10,044		$68,084,335.00

Table 3: Change in Cost

IC #	Item	Current Cost	Proposed Cost	Change in Cost
1	Inter Partes Review Request Fee - Up to 20 Claims	$24,180,000.00	$30,420,000.00	$6,240,000.00
1	Inter Partes Post-Institution Fee - Up to 20 Claims	$23,535,000.00	$29,418,750.00	$5,883,750.00
1	Inter Partes Review Request of Each Claim in Excess of 20	$1,017,000.00	$1,271,250.00	$254,250.00
1	Inter Partes Post-Institution Request of Each Claim in Excess of 20	$1,060,800.00	$1,326,000.00	$265,200.00
2	Post-Grant of Covered Business Method Review Request Fee – Up to 20 Claims	$1,472,000.00	$1,840,000.00	$368,000.00
2	Post-Grant or Covered Business Method Review Post-Institution Fee – Up to 15 Claims	$2,024,000.00	$2,530,000.00	$506,000.00
2	Post-Grant or Covered Business Method Review Request of Each Claim in Excess of 20	$238,125.00	$301,625.00	$63,500.00
2	Post-Grant or Covered Business Method Review Post-Institution Fee of Each Claim in Excess of 15	$763,125.00	$971,250.00	$208,125.00
3	Petition for Derivation	$4,800.00	$5,040.00	$240.00
14	Request to Make a Settlement Agreement Available	$400.00	$420.00	$20.00
	Totals	$54,295,250.00	$68,084,335.00	$13,789,085.00

Summary of Changes

The Patent Review resulted in a revision of ten forms and an increase of $13,789,073 in annual (non-hourly) costs.

Changes in Burden

Burden Type	Currently Approved	Proposed Change	New Estimate
Non-hourly Costs	$54,306,775	$13,789,073	$68,095,848

0651-0069’s revised burden is as follows:

• $68,095,848 in annual (non-hourly) costs