The Leahy-Smith America Invents Act, which was enacted into law on September 16, 2011, provided for many changes to the procedures of the Patent Trial and Appeal Board (âPTABâ or âBoard,â formerly the Board of Patent Appeals and Interferences) procedures. These changes included the introduction of inter partes review, post-grant review, derivation proceedings, and the transitional program for covered business method patents. Under these administrative trial proceedings, third parties may file a petition with the PTAB challenging the validity of issued patents, with each proceeding having different requirements regarding timing restrictions, grounds for challenging validity, and who may request review.
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 (1) an inventor named in an earlier application derived the claimed invention from an inventor named in the petitionerâs application, and (2) the earlier application claiming such invention was filed without authorization. The transitional program for covered business method patents is a trial proceeding conducted at the Board to review the patentability of one or more claims in a covered business method patent. The covered business method program expired on September 16, 2020 and the Board no longer accepts new petitions related to this program, but continues to accept papers in previously-instituted proceedings.
This information collection covers information submitted by the public to petition the Board to initiate an inter partes review, post-grant review, derivation proceeding, and the transitional program for covered business method patents, as well as any responses to such petitions, and the filing of any motions, replies, oppositions, and other actions, after a review/proceeding has been instituted.
US Code:
35 USC 134
Name of Law: Leahy-Smith America Invents Act
US Code:
35 USC 6
Name of Law: American Inventor Protection Act
Program Change Due to Agency Discretion in Annual Number of Responses, Annual Time Burden, and Annual Cost Burden
With this renewal, USPTO is adding in a new item (Pro Hac Vice Motion) which adds +951 responses and +476 burden hours to this information collection. This item also has a related fee which adds +$237,500 annual cost burden to this information collection.
Change Due to Adjustment in Agency Estimate in Annual Number of Responses, Annual Time Burden, and Annual Cost Burden
For this renewal, the USPTO estimates that the items in this information collection will naturally fluctuate based on respondent need. Overall USPTO is estimating that these adjustments result in fewer responses (-607) and fewer associated time burden (-106,867). At the same time, USPTO is estimating that total annual (non-hour) costs will increase due to respondents filling more items that have associated fees (+$1,305,022).
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 Supporting Statement 20220224.docx
The Manual of Patent Examining Procedure.PDF
Information Quality Guidelines _ USPTO.html
Notice of Judicial Review of a Board Decision (e.g. Notice of Appeal Under 35 U.S.C. §142) (Individuals or Households)