90 FR 97 pgs. 21757-21759 - Agency Information Collection Activities; Submission to the Office of Management and Budget for Review and Approval; Comment Request; Patent Review and Derivation Proceedings

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Type: NOTICEVolume: 90Number: 97Pages: 21757 - 21759

FR document: [FR Doc. 2025-09145 Filed 5-20-25; 8:45 am]

Agency: Commerce Department

Sub Agency: Patent and Trademark Office

Official PDF Version: PDF Version

Pages: 21757, 21758, 21759

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DEPARTMENT OF COMMERCE

Patent and Trademark Office

Agency Information Collection Activities; Submission to the Office of Management and Budget for Review and Approval; Comment Request; Patent Review and Derivation Proceedings

AGENCY:

United States Patent and Trademark Office, Department of Commerce.

ACTION:

Notice of information collection; request for comments.

SUMMARY:

The United States Patent and Trademark Office (USPTO), as required by the Paperwork Reduction Act of 1995, invites comments on the extension and revision of an existing information collection: 0651-0069 (Patent Review and Derivation Proceedings). The purpose of this notice is to allow 60 days for public comments preceding submission of the information collection to the Office of Management and Budget (OMB).

DATES:

To ensure consideration, you must submit comments regarding this information collection on or before July 21, 2025.

ADDRESSES:

Interested persons are invited to submit written comments by any of the following methods. Do not submit Confidential Business Information or otherwise sensitive or protected information.

• Email: InformationCollection@uspto.gov. Include "0651-0069 comment" in the subject line of the message.

• Federal eRulemaking Portal: http://www.regulations.gov.

• Mail: Justin Isaac, Office of the Chief Administrative Officer, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.

FOR FURTHER INFORMATION CONTACT:

Requests for additional information should be directed to Michael P. Tierney, Vice Chief Administrative Patent Judge, at: Patent Trial and Appeal Board, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450; 571-272-4676; or Michael.Tierney@uspto.gov with "0651-0069 comment" in the subject line. Additional information about this information collection is also available at http://www.reginfo.gov under "Information Collection Review."

SUPPLEMENTARY INFORMATION:

I. Abstract

The Leahy-Smith America Invents Act, which was enacted into law on September 16, 2011, changed the procedures of the Patent Trial and Appeal Board ("PTAB" or "Board," formerly the Board of Patent Appeals and Interferences). 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.

[top] Inter partes review is a trial proceeding conducted at the Board to

review the patentability of one or more claims in a patent but 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. 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 section 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 petitioner's 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.

The USPTO's projections are based on data from the past year. The USPTO recognizes that the numbers may fluctuate given interim changes to the institution process. The USPTO has adjusted the estimated burden hours and the number of estimated filings based on recent changes to these proceedings.

This 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.

II. Method of Collection

Applicants must submit the information electronically using Patent Trial and Appeal Case Tracking System filing system. Parties may seek authorization to submit a filing by means other than electronic filing pursuant to 42 CFR 42.6(b)(2).

III. Data

OMB Control Number: 0651-0069.

Forms: None.

Type of Review: Extension and revision of a currently approved information collection.

Affected Public: Private sector.

Respondent's Obligation: Required to obtain or retain benefits.

Frequency: On occasion.

Estimated Number of Annual Respondents: 7,897 respondents.

Estimated Number of Annual Responses: 11,947 responses.

Estimated Time per Response: The USPTO estimates that the responses in this information collection will take the public approximately 18 minutes (0.3 hours) to 170 hours to complete. This includes the time to gather the necessary information, create the document, and submit the completed item to the USPTO.

Estimated Total Annual Respondent Burden Hours: 590,630 hours.

Estimated Total Annual Respondent Hourly Cost Burden: $264,011,610.

Footnotes:

¹ ?2023 Report of the Economic Survey, published by the Committee on Economics of Legal Practice of the American Intellectual Property Law Association; pg. F-41. The USPTO uses the average billing rate for intellectual property work in all firms which is $447 per hour ( https://www.aipla.org/home/news-publications/economic-survey ).

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Item No.	Item	Estimated annual respondents	Responses per respondent	Estimated annual responses	Estimated time for response (hours)	Estimated burden (hour/year)	Rate? ¹ ($/hour)	Estimated annual respondent cost burden
		(a)	(b)	(a) × (b) = (c)	(d)	(c) × (d) = (e)	(f)	(e) × (f) = (g)
1	Petition for Inter Partes Review	1,300	1	1,300	120	156,000	$447	$69,732,000
2	Petition for Post-Grant Review or Covered Business Method Patent Review	50	1	50	170	8,500	447	3,799,500
3	Petition for Derivation	10	1	10	170	1,700	447	759,900
4	Patent Owner Preliminary Response to Petition for Initial Inter Partes Review	975	1	975	90	87,750	447	39,224,250
5	Patent Owner Preliminary Response to Petition for Initial Post-Grant Review or Covered Business Method Patent Review	50	1	50	90	4,500	447	2,011,500
6	Request for Rehearing	50	1	50	80	4,000	447	1,788,000
7	Request for Director Review	150	1	150	80	12,000	447	5,364,000
8	Response to a Request for Director Review	150	1	150	40	6,000	447	2,682,000
9	Other Motions, Replies, Surreplies, and Oppositions in Inter Partes Review	2,600	2.5	6,500	40	260,000	447	116,220,000
10	Other Motions, Replies, Surreplies, and Oppositions in Post-Grant Review or Covered Business Method Review	100	2.5	250	40	10,000	447	4,470,000
11	Other Motions, Replies, Surreplies, and Oppositions in Derivation Proceedings	10	1	10	40	400	447	178,800
12	Pro Hac Vice Motion	450	1	450	0.5 (30 minutes)	225	447	100,575
13	Notice of intent to designate provisionally recognized PTAB attorney as counsel	500	1	500	0.3 (18 minutes)	150	447	67,050
14	Request for Oral Hearing	400	1	400	2	800	447	357,600
15	Request to Treat a Settlement as Business Confidential	375	1	375	2	750	447	335,250
16	Settlement	375	1	375	100	37,500	447	16,762,500
17	Arbitration Agreement and Award	1	1	1	4	4	447	1,788
18	Request to Make a Settlement Agreement Available	1	1	1	1	1	447	447
19	Notice of Judicial Review of a Board Decision ( e.g., Notice of Appeal Under 35 U.S.C. 142)	350	1	350	1	350	447	156,450
	Totals	7,897		11,947		590,630		264,011,610

Estimated Total Annual Respondent Non-hourly Cost Burden: $76,099,956. There are no capital start-up costs, maintenance costs, recordkeeping costs, or postage costs associated with this information collection. However, the USPTO estimates that the total annual non-hour cost burden for this information collection, in the form of filing fees, is $76,099,956.

Filing Fees

The filing fees for this information collection are listed in the table below.

Item No.	Fee code(s)	Item	Estimated annual responses	Filing fee ($)	Estimated non-hourly cost burden
			(a)	(b)	(a) × (b) = (c)
1	1406	Inter Partes Review Request Fee-Up to 20 Claims	1,300	$23,750	$30,875,000
	1414	Inter Partes Review Post-Institution Fee-Up to 20 Claims	1,300	28,125	36,562,500
	1407	Inter Partes Review Request of Each Claim in Excess of 20	3,700	470	1,739,000
	1415	Inter Partes Post-Institution Request of Each Claim in Excess of 20	3,700	940	3,478,000
2	1408	Post-Grant or Covered Business Method Review Request Fee-Up to 20 Claims	50	25,000	1,250,000
	1416	Post-Grant or Covered Business Method Review Post-Institution Fee-Up to 20 Claims	50	34,375	1,718,750
	1409	Post-Grant or Covered Business Method Review Request of Each Claim in Excess of 20	150	595	89,250
	1417	Post-Grant or Covered Business Method Review Post-Institution Request of Each Claim in Excess of 20	150	1,315	197,250
3	1412	Petition for a Derivation Proceeding	2	452	904
7	1419	Request for Director Review	150	452	67,800
	1420
	1421
12	1418	Pro Hac Vice Admission Fee	450	269	121,050
16	1411	Request to Make a Settlement Agreement Available and Other Requests Filed in a Patent Trial Proceeding	1	452	452
		Totals	11,003		76,099,956

IV. Request for Comments

The USPTO is soliciting public comments to:

(a) Evaluate whether the collection of information is necessary for the proper performance of the functions of the agency, including whether the information will have practical utility;

(b) Evaluate the accuracy of the agency's estimate of the burden of the collection of information, including the validity of the methodology and assumptions used;

(d) Minimize the burden of the collection of information on those who are to respond, including through the use of appropriate automated, electronic, mechanical, or other technological collection techniques or other forms of information technology, e.g., permitting electronic submission of responses.

All comments submitted in response to this notice are a matter of public record. The USPTO will include or summarize each comment in the request to OMB to approve this information collection. Before including an address, phone number, email address, or other personally identifiable information (PII) in a comment, be aware that the entire comment-including PII-may be made publicly available at any time. While you may ask in your comment to withhold PII from public view, the USPTO cannot guarantee that it will be able to do so.

Justin Isaac,

Information Collections Officer, Office of the Chief Administrative Officer, United States Patent and Trademark Office.

[FR Doc. 2025-09145 Filed 5-20-25; 8:45 am]

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