Document

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) will submit the following information collection request to the Office of Management and Budget (OMB) for review and cleara...

PDF version FederalRegister.gov

Department of Commerce

Patent and Trademark Office

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) will submit the following information collection request to the Office of Management and Budget (OMB) for review and clearance in accordance with the Paperwork Reduction Act of 1995, on or after the date of publication of this notice. The USPTO invites comments on the information collection renewal of 0651-0069 (Patent Review and Derivation Proceedings), which helps the USPTO assess the impact of its information collection requirements and minimize the public's reporting burden. Public ( printed page 38959) comments were previously requested via the Federal Register on May 21, 2025, during a 60-day comment period (90 FR 21757). This notice allows for an additional 30 days for public comments.

DATES:

To ensure consideration, you must submit comments regarding this information collection on or before September 12, 2025.

ADDRESSES:

Written comments and recommendations for this information collection should be submitted within 30 days of the publication of this notice on the following website, www.reginfo.gov/public/do/PRAMain. Find this particular information collection by selecting “Currently under 30-day Review—Open for Public Comments” or by using the search function and entering either the title of the information collection or the OMB Control Number, 0651-0069. Do not submit Confidential Business Information or otherwise sensitive or protected information.

FOR FURTHER INFORMATION CONTACT:

This information collection request may be viewed atwww.reginfo.gov/public/do/PRAMain. Follow the instructions to view Department of Commerce, USPTO information collections currently under review by OMB.
Email: InformationCollection@uspto.gov. Include “0651-0069 information request” in the subject line of the message.
Mail: Justin Isaac, Office of the Chief Administrative Officer, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.
Telephone: Michael P. Tierney, Vice Chief Administrative Patent Judge, 571-272-4676.

SUPPLEMENTARY INFORMATION:

Title: Patent Review and Derivation Proceedings.

OMB Control Number: 0651-0069.

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 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.

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 (0.30 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 Non-hourly Cost Burden: $76,099,956.

Justin Isaac,

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

[FR Doc. 2025-15361 Filed 8-12-25; 8:45 am]

BILLING CODE 3510-16-P

Legal Citation

Federal Register Citation

Use this for formal legal and research references to the published document.

90 FR 38958

Web Citation

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“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 (August 13, 2025), https://thefederalregister.org/documents/2025-15361/agency-information-collection-activities-submission-to-the-office-of-management-and-budget-for-review-and-approval-comme.