Agency Information Collection Activities; Submission to the Office of Management and Budget for Review and Approval; Comment Request; Patent Review and Derivation Proceedings
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 informat...
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.
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.
Inter partes
review is a trial proceeding conducted at the Board to
( printed page 21758)
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:
$264,011,610.
Table 1—Total Burden Hours and Hourly Costs to Private Sector Respondents
Item No.
Item
Estimated
annual
respondents
Responses per
respondent
Estimated
annual
responses
Estimated time for response (hours)
Estimated
burden
(hour/year)
Rate 1
($/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
( printed page 21759)
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 $76,099,956.
Filing Fees
The filing fees for this information collection are listed in the table below.
Table 2—Filing Fees
Item No.
Fee code(s)
Item
Estimated annual
responses
Filing fee
($)
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;
(c) Enhance the quality, utility, and clarity of the information to be collected; and
(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.
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).
Use this for formal legal and research references to the published document.
90 FR 21757
Web Citation
Suggested Web Citation
Use this when citing the archival web version of the document.
“Agency Information Collection Activities; Submission to the Office of Management and Budget for Review and Approval; Comment Request; Patent Review and Derivation Proceedings,” thefederalregister.org (May 21, 2025), https://thefederalregister.org/documents/2025-09145/agency-information-collection-activities-submission-to-the-office-of-management-and-budget-for-review-and-approval-comme.