0651-0069 Supporting Statement_2025 final

SUPPORTING STATEMENT

United States Patent and Trademark Office

Patent Review and Derivation Proceedings

OMB CONTROL NUMBER 0651-0069

2025

A. JUSTIFICATION

1. Explain the circumstances that make the collection of information necessary. Identify any legal or administrative requirements that necessitate the information collection. Attach a copy of the appropriate section of each statute and regulation mandating or authorizing the collection of information.

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 (“PTAB” or “Board,” formerly the Board of Patent Appeals and Interferences) procedures.¹ 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 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.

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.

Table 1 provides the specific statutes and regulations authorizing the USPTO to collect the information discussed above.

Table 1: Information Requirements for Patent Review and Derivation Proceedings

Item No.	Requirement	Statute	Regulation
1	Petitions for Inter Partes Review	35 U.S.C. § 312	37 CFR 42.5, 42.6, 42.8, 42.11, 42.13, 42.20-42.22, 42.24(a)(1), 42.63, 42.65, and 42.101-42.105
2	Petition for Post-Grant Review or Covered Business Method Patent Review	35 U.S.C. § 322	37 CFR 42.5, 42.6, 42.8, 42.11, 42.13, 42.20-42.22, 42.24(a)(2), 42.24(a)(3), 42.63, 42.65, 42.201-42.205, and 42.302-42.304
3	Petition for Derivation	35 U.S.C. § 135	37 CFR 42.5, 42.6, 42.8, 42.11, 42.13, 42.20-42.22, 42.24(a)(4), 42.63, 42.65, 42.402-42.406
4	Patent Owner Preliminary Response to Petition for Initial Inter Partes Review	35 U.S.C. § 313	37 CFR 42.6, 42.8, 42.11, 42.13, 42.21, 42.23, 42.24(c), 42.51-42.54, 42.63 and 42.65
5	Patent Owner Preliminary Response to Petition for Initial Post-Grant Review or Covered Business Method Patent Review	35 U.S.C. § 323	37 CFR 42.6, 42.8, 42.11, 42.13, 42.21, 42.23, 42.24(c), 42.51-42.54, 42.63 and 42.65
6	Request for Rehearing	35 U.S.C. §§ 2(b)(2),316(a)(4), 316(a)(13), 326(a)(4), and 326(a)(12)	37 CFR 42.71
7	Request for Director Review	35 U.S.C. §§ 2(b)(2), 6, 316(a)(4), 326(a)(4)	37 CFR 42.75
8	Response to Request for Director Review	35 U.S.C. §§ 2(b)(2), 6, 316(a)(4), 326(a)(4)	37 CFR 42.75
9	Other Motions, Replies, Surreplies, and Oppositions in Inter Partes Review	35 U.S.C. § 316	37 CFR 42.6, 42.8, 42.11, 42.13, 42.21, 42.22, 42.23, 42.24(a)(5), 42.24(b), 42.24(c), 42.51-42.54, 42.63-42.65, 42.107, 42.120, 42.121, and 42.123
10	Other Motions, Replies, Surreplies, and Oppositions in Post-Grant Review or Covered Business Method Review	35 U.S.C. § 326	37 CFR 42.6, 42.8, 42.11, 42.13, 42.21-42.23, 42.24(a)(5), 42.24(b), 42.24(c), 42.51-42.54, 42.63-42.65, 42.207, 42.220, 42.221, and 42.223
11	Other Motions, Replies, Surreplies, and Oppositions in Derivation Proceedings	35 U.S.C. § 135(b)	37 CFR 42.6, 42.8, 42.11, 42.13, 42.21-42.23, 42.24(a)(5), 42.24(b), 42.24(c), 42.51-42.54, and 42.63-42.65
12	Pro Hac Vice Motion	35 U.S.C. §§ 2(b)(2), 135, 316, 326	37 CFR 42.10
13	Notice of Intent to Designate Provisionally Recognized PTAB Attorney as Counsel	35 U.S.C. §§ 2(b)(2), 135, 316, 326	37 CFR 42.10
14	Request for Oral Hearing	35 U.S.C. §§ 2(b)(2), 316 (a)(10), and 326(a)(10)	37 CFR 42.70
15	Request to Treat a Settlement as Business Confidential	35 U.S.C. §§ 135(e), 317(a), and 327(a)	37 CFR 42.74(c) and 42.410
16	Settlement	35 U.S.C. §§ 2(b)(2), 135(e), 317, and 327	37 CFR 42.73(b) and 42.74(b)
17	Arbitration Agreement and Award	35 U.S.C. § 135(f)	37 CFR 42.410
18	Request to Make a Settlement Agreement Available	35 U.S.C. §§ 135(e), 317(b), and 327(b)	37 CFR 42.74(c)
19	Notice of Judicial Review of a Board Decision (e.g., Notice of Appeal Under 35 U.S.C. § 142)	35 U.S.C. §§ 141, 142, 145, and 146	37 CFR 90.1 through 90.3

2. Indicate how, by whom, and for what purpose the information is to be used. Except for a new information collection, indicate the actual use the Agency has made of the information received from the current information collection.

The public uses this information collection to petition the Board to seek the institution of – and to participate in – inter partes reviews, post-grant reviews, covered business method patent reviews, and derivation proceedings. These submissions are typically done by attorneys on behalf of a variety of clients. The USPTO also permits individuals to submit these items directly on their own behalf. This is rarely done, and the USPTO advises respondents to obtain counsel.

The Board disseminates information that it collects (unless filed under seal) through various publications and databases. This information collection includes the filings of the parties and decisions and orders by the Board in trials and derivation proceedings.

Opinions authored by the Board have varying degrees of authority attached to them. There are precedential opinions, which when published, are binding and provide the criteria and authority that the Board will use to decide all other factually similar cases (until the opinion is overruled or changed by statute). There are informative opinions, which are non-precedential and illustrate the norms of Board decision-making for the public. The final type of Board opinion is the routine opinion. Routine opinions are also non‑precedential and are publicly available opinions. Since public policy favors a widespread publication of opinions, the Board publishes all publicly available opinions, even if the opinions are not binding precedent upon the Board.

The information collected, maintained, and used in this information collection is based on OMB and USPTO guidelines. This includes the basic information quality standards established in the Paperwork Reduction Act (44 U.S.C. Chapter 35), in OMB Circular A-130, and in the USPTO information quality guidelines.

The information in this information collection is generally submitted through the USPTO’s web-based electronic filing system, called the Patent Trial and Appeal Case Tracking System (P-TACTS). Parties use P-TACTS to file a petition, motion, opposition, reply, surreply, or request. Parties may seek authorization to submit a filing by means other than electronic filing pursuant to 42 CFR 42.6(b)(2).

Table 2 outlines how this collection of information is used by the public and the USPTO.

Table 2: Needs and Uses

Item No.	Form/Function	Form No.	Needs and Uses
1	Petition for Inter Partes Review	No Form Associated	Used by parties who are not the owners of a patent and who, along with any real party-in-interest, has not filed a civil action challenging the validity of a claim of the patent to file a petition to institute an inter partes review of a patent. Used by parties to request to cancel as unpatentable one or more claims of a patent 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. Used by parties to demonstrate that they have standing to file the petition (i.e., the patent is available for inter partes review and the petitioner is not barred from requesting such review). Used by the Board to determine whether to institute an inter partes review including whether the petition identifies all real parties in interest, identifies each claim challenged (including the grounds on which the challenge to each claim is based, and the evidence that supports the grounds), provides copies of the necessary documents, and that the necessary fee is included.
2	Petition for Post-Grant Review or Covered Business Method Patent Review	No Form Associated	Used by parties who are not owners of a patent and who, along with any real party-in-interest, has not filed a civil action challenging the validity of a claim of the patent to file a petition to institute a post-grant review of a patent. Used by parties to request to cancel as unpatentable one or more claims of a patent on any ground that could be raised under 35 U.S.C. § 282(b)(2) or (3) (relating to invalidity of the patent or any claim) as part of a post-grant review. Used by parties to file a petition for a transitional proceeding with respect to a covered business method patent when the petitioner, the petitioner’s real party-in-interest or privy has been sued for infringement of the patent or has been charged with infringement under that patent and where the petitioner and the petitioner’s real party-in-interest have not filed a civil action challenging the validity of a claim of the patent. Used by the Board to determine whether to institute a post-grant review including whether the petition identifies all real parties in interest, identifies each claim challenged (including the grounds on which the challenge to each claim is based and the evidence that supports the grounds), provides copies of the necessary documents, and that the necessary fee is included. Used by the Board to determine whether to institute a transitional proceeding for covered business method patents including whether a claim is a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service and not a technological invention.
3	Petition for Derivation	No Form Associated	Used by an applicant for patent to petition the Board to institute a derivation proceeding. Used by the applicant to demonstrate that they have standing to file the petition for derivation (i.e., timely filing a petition that demonstrates that the earlier filed application derived the claimed invention and was filed by another inventor without authorization and that the applicant has taken steps to obtain patent protection for the invention). Used by the Board to determine whether to institute a derivation proceeding as long as the necessary requirements are met (i.e., the petition identifies the precise relief requested, the petition is filed within one year after the first publication of a claim to an invention, the fee is submitted with the petition).
4	Patent Owner Preliminary Response to Petition for Initial Inter Partes Review	No Form Associated	Used by patent owner to set forth reasons why no inter partes review should be instituted. Used by the Board together with the petition for inter partes review to determine whether to institute an inter partes review.
5	Patent Owner Preliminary Response to Petition for Initial Post‑Grant Review or Covered Business Method Patent Review	No Form Associated	Used by patent owner to set forth reasons why no post-grant review or covered business method review should be instituted. Used by the Board together with the petition for post-grant review or covered business method review to determine whether to institute a post-grant review or covered business method review.
6	Request for Rehearing	No Form Associated	Used by the parties to request the Board to reconsider a decision on institution or other decision. Used by the Board to reconsider the original decision on institution or other decision.
7	Request for Director Review	No Form Associated	Used by the parties to request the Director to reconsider a decision on institution or other decision. Used by the Director to reconsider the original decision on institution or other decision.
8	Response to Request for Director Review	No Form Associated	Used by the parties to oppose a request by another party to review a decision on institution or other decision. Used by the Director to review the original decision on institution or other decision.
9	Other Motions, Replies, Surreplies, and Oppositions in Inter Partes Review	No Form Associated	Used by parties to seek relief in a proceeding including motions to amend, motions to exclude evidence, motions to seal, motions for joinder, motions to file supplemental information, and motions to correct clerical or typographical mistakes in a petition for inter partes review. Used by the opposing parties, such as the petitioner, to file a reply to the patent owner preliminary response, or by the patent owner to file a surreply thereto prior to institution. Used by the opposing parties, such as by a patent owner in response to a petition, by the petitioner in a reply thereto, or by the patent owner in a surreply thereto after institution, and to set forth the reasons why the Board should not grant the relief sought in a motion. Used by the opposing parties and the public as amicus curiae in submissions to the precedential opinion panel. Used by the Board in issuing a decision on institution or in issuing a final written decision with respect to patentability of a challenged patent claim. Used by the patent owner in briefing on requests for discretionary denial, to file a brief on any applicable bases for discretionary denial, and any reply brief on these issues. Used by the petitioner to file an opposition to a brief on applicable bases for discretionary denial. Used by the Director to consider any applicable bases for discretionary denial.
10	Other Motions, Replies, Surreplies, and Oppositions in Post-Grant Review or Covered Business Method Review	No Form Associated	Used by parties to seek relief in a proceeding including motions to amend, motions to exclude evidence, motions to seal, motions for joinder, motions to file supplemental information, and motions to correct clerical or typographical mistakes in a petition for post-grant review or covered business method patent review. Used by the opposing parties, such as the petitioner, to file a reply to the patent owner preliminary response, or by the patent owner to file a surreply thereto prior to institution Used by the opposing parties, such as by a patent owner in response to a petition, by the petitioner in a reply thereto, or by the patent owner in a surreply thereto after institution, and to set forth the reasons why the Board should not grant the relief sought in a motion. Used by the opposing parties and the public as amicus curiae in submissions to the precedential opinion panel. Used by the Board in issuing a decision on institution or a final written decision with respect to patentability of a challenged patent claim. Used by the patent owner in briefing on requests for discretionary denial, to file a brief on any applicable bases for discretionary denial, and any reply brief on these issues. Used by the petitioner to file an opposition to a brief on applicable bases for discretionary denial. Used by the Director to consider any applicable bases for discretionary denial.
11	Other Motions, Replies, Surreplies, and Oppositions in Derivation Proceedings	No Form Associated	Used by parties to seek relief in a proceeding including motions to amend, motions to exclude evidence, motions to seal, motions for joinder, motions to file supplemental information, and motions to correct clerical or typographical mistakes in a petition for a derivation proceeding. Used by the opposing parties, such as the petitioner, to file a reply to the patent owner preliminary response, or by the patent owner to file a surreply thereto prior to institution. Used by the opposing parties, such as by a patent owner in response to a petition, by the petitioner in a reply thereto, or by the patent owner in a surreply thereto after institution, and to set forth the reasons why the Board should not grant the relief sought in a motion. Used by the opposing parties and the public as amicus curiae in submissions to the precedential opinion panel. Used by the Board in issuing a decision on institution or a final written decision with respect to the alleged derivation. Used by the patent owner in briefing on requests for discretionary denial, to file a brief on any applicable bases for discretionary denial, and any reply brief on these issues. Used by the petitioner to file an opposition to a brief on applicable bases for discretionary denial. Used by the Director to consider any applicable bases for discretionary denial.
12	Pro Hac Vice Motion	No Form Associated	Used by a party to request authorization to be represented by counsel who is not a registered practitioner, i.e., as back-up counsel where the lead counsel is a registered practitioner.
13	Notice of Intent to Designate Provisionally Recognized PTAB Attorney as Counsel	No Form Associated	Used by a party to request authorization to be represented by counsel who is a provisionally recognized attorney, i.e., as back-up counsel where the lead counsel is a registered practitioner.
14	Request for Oral Hearing	No Form Associated	Used by parties to request an oral hearing. Used by the Board to schedule an oral hearing, if appropriate.
15	Request to Treat a Settlement as Business Confidential	No Form Associated	Used by parties to request that the settlement agreement be kept confidential and be filed separately from the patent or application file. Used by the Board to provide that the settlement agreement be designated as business confidential and kept separately from the publicly available patent or application files.
16	Settlement	No Form Associated	Used by parties to jointly request a termination of the proceeding. Used by the Board to terminate the proceeding upon a joint request.
17	Arbitration Agreement and Award	No Form Associated	Used by parties to give notice to the Office of the result of an arbitration between parties, e.g., in a derivation. Used by the Board to update the records of an instituted derivation proceeding.
18	Request to Make a Settlement Agreement Available	No Form Associated	Used by a requester to gain access to a settlement agreement. Used by the Board to determine whether the requester may be granted access to the settlement agreement.
19	Notice of Judicial Review of a Board Decision (e.g., Notice of Appeal Under 35 U.S.C. § 142)	No Form Associated	Used by parties to notify the USPTO that a party has filed a notice of appeal or election Used by the Board to recognize that the final decision of the Board has been appealed.

3. Describe whether, and to what extent, the collection of information involves the use of automated, electronic, mechanical, or other technological collection techniques or other forms of information technology, e.g., permitting electronic submission of responses, and the basis for the decision for adopting this means of information collection. Also describe any consideration of using information technology to reduce burden.

All of the patent review and derivation papers will be filed electronically, unless otherwise authorized by the Board. The USPTO currently utilizes P-TACTS, which allows parties to file proceedings electronically.

The PTAB disseminates opinions and decisions to the public through the USPTO’s website and in the individual case locations in P-TACTS, which has a public portal. The PTAB also posts final decisions in patent review and derivation proceedings on the USPTO’s electronic Freedom of Information Act (e-FOIA) website.

4. Describe efforts to identify duplication. Show specifically why any similar information already available cannot be used or modified for use for the purposes described in Item 2 above.

This information is collected only when parties file petitions and other associated papers for inter partes reviews, post-grant reviews, covered business method patent reviews, and derivations. This information collection does, in part, solicit data already available at the USPTO, in that certain copies of evidence may have been submitted earlier as part of the patent examination process of the application that resulted in the patent under review. The duplication of effort is limited, however, and the USPTO considers it necessary as such duplication is required pursuant to 35 U.S.C. §§ 312 and 322. For example, a patent owner may request that the Board consider a disclosure that was made in the patent application and would resubmit the material so that it can be considered in the AIA trial. Although the copies of evidence relied upon in petitions may be duplicates of evidence already in the file of the application that resulted in the patent under review, the necessity of absolute clarity as to the evidence relied on in the proceeding to have a complete record, coupled with the requirement to collect this information under the AIA, outweighs the burden on the public.

5. If the collection of information impacts small businesses or other small entities, describe any methods used to minimize burden.

This collection of information does not impose a significant economic impact on small entities or small businesses.

6. Describe the consequence to federal program or policy activities if the information collection is not conducted or is conducted less frequently, as well as any technical or legal obstacles to reducing burden.

This information is collected only when a member of the public files petitions for inter partes review, post-grant review, covered business method patent review, or an applicant files a petition seeking a derivation proceeding or files any of the responses, replies, requests, motions, oppositions, or other papers associated with these proceedings. This information is not collected elsewhere. Therefore, this collection of information could not be conducted less frequently. If this information was not collected, the Board could not ensure that the petitioner has submitted all of the information (and applicable fees) necessary to initiate these new proceedings, nor could the Board determine whether the proceeding should be instituted. If this information was not collected, the Office could not comply with the requirements of 35 U.S.C. §§ 135, 141, 142, 145, 146, 312, 313, 316, 317, 322, 323, 326, and 327, and adopted 37 CFR Parts 42 and 90.

7. Explain any special circumstances that would cause an information collection to be conducted in a manner:

• requiring respondents to report information to the agency more often than quarterly;

• requiring respondents to prepare a written response to a collection of information in fewer than 30 days after receipt of it;

• requiring respondents to submit more than an original and two copies of any document;

• requiring respondents to retain records, other than health, medical, government contract, grant-in-aid, or tax records, for more than three years;

• in connection with a statistical survey, that is not designed to produce valid and reliable results that can be generalized to the universe of study;

• requiring the use of a statistical data classification that has not been reviewed and approved by OMB;

• that includes a pledge of confidentiality that is not supported by authority established in statute or regulation, that is not supported by disclosure and data security policies that are consistent with the pledge, or which unnecessarily impedes sharing of data with other agencies for compatible confidential use; or requiring respondents to submit proprietary trade secrets, or other confidential information unless the agency can demonstrate that it has instituted procedures to protect the information's confidentiality to the extent permitted by law.

On a case-by-case basis, administrative patent judges may require responses in fewer than 30 days.

8. If applicable, provide a copy and identify the date and page number of publications in the Federal Register of the agency's notice, required by 5 CFR 1320.8(d), soliciting comments on the information collection prior to submission to OMB. Summarize public comments received in response to that notice and describe actions taken by the agency in response to these comments. Specifically address comments received on cost and hour burden.

Describe efforts to consult with persons outside the agency to obtain their views on the availability of data, frequency of information collection, the clarity of instructions and recordkeeping, disclosure, or reporting format (if any), and on the data elements to be recorded, disclosed, or reported.

Consultation with representatives of those from whom information is to be obtained or those who must compile records should occur at least once every 3 years - even if the collection of information activity is the same as in prior periods. There may be circumstances that may preclude consultation in a specific situation. These circumstances should be explained.

The 60-Day Notice published in the Federal Register on May 21, 2025 (90 FR 21757).² The public comment period closed on July 21, 2025. The USPTO received one public comment in response to the notice.

Comment: The commenter stated that this collection should be reviewed for the purposes of the Patent rights and activities relating to a contract and for the accuracy and compliance of the collection, which would lower the cost burden. Response: Information collection 0651-0069 does not have any contracts associated with it. The cost burden associated with this information collection are from actions submitted to the Patent Trial and Appeal Board for patent review and derivation proceedings. As such, this comment does not bear substantive impact on this information collection. The USPTO collects the minimum amount of information and fees needed to submit actions relating to patent review and derivation proceedings to the Patent Trial and Appeal Board.

The USTPO published a 30-Day Notice for public comment in the Federal Register on August 13, 2025 (90 FR 38958).³ This public comment period closes on September 12, 2025.

9. Explain any decision to provide any payment or gift to respondents, other than remuneration of contractors or grantees.

This information collection does not include a payment or gift to any respondent.

10. Describe any assurance of confidentiality provided to respondents and the basis for the assurance in statute, regulation, or agency policy. If the information collection requires a system of records notice (SORN) or privacy impact assessment (PIA), those should be cited and described here.

Generally, the file of any inter partes review, post-grant review, covered business method patent review, and derivation proceeding would be available to the public. See 35 U.S.C. §§ 122, 316(a)(1), and 326(a)(1). In 37 CFR 42.55, petitioners filing confidential information can file, concurrently with the filing of the petition, a motion for a protective order as to the confidential information. Under those regulations, the petitioner must file with the petition, but not serve the patent owner with the confidential information, and can do so under seal. The patent owner may then access the confidential information prior to the institution of a trial by agreeing to the terms of the motion for protective order.

This information collection contains information that is subject to the Privacy Act.

SORN COMMERCE/PAT-TM-6 Parties Involved in Patent Interference Proceedings, published on March 29, 2013 (78 FR 19247) covers PTAB records.⁴ This SORN covers all records relating to the declaration, conduct, and termination of interference proceedings, including, but not limited to: preliminary statements, motions, testimony, and settlement agreements. The data contained in the records may include information relating to an applicant’s, a patentee’s, or a witness’s name, age, citizenship, residence, educational and work background, physical and mental health, activities relating to conception of the contested subject matter, and other matters which may arise during the conduct of the interference proceeding or in connection with any agreements made by the parties relative to the interference proceeding.

The information is protected from disclosure to third parties in accordance with the Privacy Act. However, routine uses of this information may include disclosure to the following: to law enforcement for investigation in the event that the system of records indicates a violation or potential violation of law; to a federal, state, local, or international agency in response to its request; to an agency, organization, or individual for the purpose of performing audit or oversight operations as authorized by law; to non-federal personnel under contract to the Agency; to a court for adjudication and litigation; to the Department of Justice for Freedom of Information Act assistance; to members of Congress working on behalf of an individual; to the Office of Personnel Management for personnel research purposes; to National Archives and Records Administration for records management; and to OMB for legislative coordination and clearance. Failure to provide any part of the requested information may result in an inability to process submissions.

Patent application files may be involved in PTAB decisions and procedures. The SORN COMMERCE/PAT-TM-7 Patent Application Files, published on March 29, 2013 (78 FR 19243), covers these patent application files.⁵

This SORN identifies the categories of individuals covered by the system containing applicants for patent, including inventors, legal representatives for deceased or incapacitated inventors, and other persons authorized by law to make applications for patent. Categories of records in the system comprises the following: oath or declaration of applicant including name, citizenship, residence, post office address, and other information pertaining to the applicant’s activities in connection with the invention for which a patent is sought.

The information in SORN 7 is protected from disclosure to third parties in accordance with the Privacy Act until the application is published under 35 U.S.C. 122(b) or issued as a patent under 35 U.S.C. 153. Prior to application publication or patent issuance, the information in SORN 7 is protected from disclosure to third parties in accordance with the Privacy Act, except that disclosure is permitted for the following routine uses including, but not limited: to law enforcement and investigation in the event that the system of records indicates a violation or potential violation of law; to a federal, state, local, or international agency, in response to its request regarding personnel matters; to an agency, organization, or individual for the purpose of performing audit or oversight operations as authorized by law; to non-federal personnel under contract to the agency; to a court for adjudication and litigation; to the Department of Justice for Freedom of Information Act (FOIA) assistance; to members of Congress working on behalf of an individual; to National Archives and Records Administration for inspection of records: to the Office of Management and Budget (OMB) for legislative coordination and clearance; to the Office of Personal Management (OPM) for personnel research purposes; to the General Services Administration for the inspection of records.

Privacy Impact Assessment

The applicable Privacy Impact Assessment (PIA) for this PTAB system is the Patent Trial and Appeal Case Tracking System (P-TACTS) (November 287, 2023).⁶

Patent Trial and Appeal Case Tracking System (P-TACTS) supports the Board in managing cases. For the appeals the Board decides, the documents for the patent applications and appeals are stored in other patent systems, not in P-TACTS. P-TACTS stores status information about cases in a database, which is used by internal PTAB users and is not accessible to the public. For post-grant patent proceedings, P-TACTS stores the case documents. Some of those documents are filed by the parties to the proceedings, so there is an external portal for doing so and viewing case documents. To file documents, external users need to establish a user account.

11. Provide additional justification for any questions of a sensitive nature, such as sexual behavior and attitudes, religious beliefs, and other matters that are commonly considered private. This justification should include the reasons why the agency considers the questions necessary, the specific uses to be made of the information, the explanation to be given to persons from whom the information is requested, and any steps to be taken to obtain their consent.

None of the required information in this information collection is considered to be sensitive.

12. Provide estimates of the hour burden of the collection of information. The statement should:

• Indicate the number of respondents, frequency of response, annual hour burden, and an explanation of how the burden was estimated. Unless directed to do so, agencies should not conduct special surveys to obtain information on which to base hour burden estimates. Consultation with a sample (fewer than 10) of potential respondents is desirable. If the hour burden on respondents is expected to vary widely because of differences in activity, size, or complexity, show the range of estimated hour burden, and explain the reasons for the variance. Generally, estimates should not include burden hours for customary and usual business practices.

• If this request for approval covers more than one form, provide separate hour burden estimates for each form and aggregate the hour burdens.

• Provide estimates of annualized cost to respondents for the hour burdens for collections of information, identifying and using appropriate wage rate categories. The cost of contracting out or paying outside parties for information collection activities should not be included here. Instead, this cost should be included under ‘Annual Cost to Federal Government’.

The USPTO’s projection is based on data from the past year. The USPTO recognizes it is possible the numbers may fluctuate given changes to the institution process. The USPTO has adjusted the hours, estimates, and the number of filings based on changes to the process. Table 3 calculates the burden hours and costs of this information collection to the public, based on the following factors:

• Respondent Calculation Factors

The USPTO estimates that it will receive approximately 11,947 responses per year from 7,897 respondents for this information collection.

The USPTO estimates that approximately 100% of the responses in this collection will be submitted electronically.

• Burden Hour Calculation Factors

The USPTO estimates that it takes the public approximately 18 minutes (0.30 hours) to 170 hours, depending on the complexity of the situation and item, to gather the necessary information, prepare the appropriate document(s), and submit the item to the USPTO. Using these burden factors, USPTO estimates that the total respondent hourly burden for this information collection is 590,630 hours per year.

• Cost Burden Calculation Factors

The USPTO uses a professional rate of $447 per hour for respondent cost burden calculations, which is the median rate for intellectual property attorneys in private firms as shown in the 2023 Report of the Economic Survey published by the American Intellectual Property Law Association (AIPLA).

Using this hourly rate, the USPTO estimates that the total respondent cost burden for this information collection is $264,011,610 per year.

Table 3: Total Burden Hours and Hourly Costs to Private Sector Respondents

Item No.	Item	Estimated Annual Respondents (a)	Responses per Respondent (b)	Estimated Annual Responses (a) x (b) = (c)	Estimated Time for Response (hours) (d)	Estimated Burden (hour/year) (c) x (d) = (e)	Rate7 ($/hour) (f)	Estimated Annual Respondent Cost Burden (e) x (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	225	$447	$100,575
13	Notice of intent to designate provisionally recognized PTAB attorney as counsel	500	1	500	0.3	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

13. Provide an estimate for the total annual cost burden to respondents or record keepers resulting from the collection of information. (Do not include the cost of any hour burden already reflected on the burden worksheet).

• The cost estimate should be split into two components: (a) a total capital and start-up cost component (annualized over its expected useful life) and (b) a total operation and maintenance and purchase of services component. The estimates should take into account costs associated with generating, maintaining, and disclosing or providing the information. Include descriptions of methods used to estimate major cost factors including system and technology acquisition, expected useful life of capital equipment, the discount rate(s), and the time period over which costs will be incurred. Capital and start-up costs include, among other items, preparations for collecting information such as purchasing computers and software; monitoring, sampling, drilling and testing equipment; and record storage facilities.

• If cost estimates are expected to vary widely, agencies should present ranges of cost burdens and explain the reasons for the variance. The cost of purchasing or contracting out information collections services should be a part of this cost burden estimate. In developing cost burden estimates, agencies may consult with a sample of respondents (fewer than 10), utilize the 60-day pre-OMB submission public comment process and use existing economic or regulatory impact analysis associated with the rulemaking containing the information collection, as appropriate.

• Generally, estimates should not include purchases of equipment or services, or portions thereof, made: (1) prior to October 1, 1995, (2) to achieve regulatory compliance with requirements not associated with the information collection, (3) for reasons other than to provide information or keep records for the government, or (4) as part of customary and usual business or private practices.

There are no capital start-up costs, maintenance costs, recordkeeping costs, or postage costs associated with this information collection. However, this information collection has non-hourly cost in the form of fees paid to the USPTO. The total non-hour respondent cost burden for this information collection is estimated to be $76,099,956 per year, which covers the filing fees associated with this information collection.

Fees

The filing fees associated with this information collection are listed in Table 4 below.

Table 4: Filing Fees

Item No.	Fee Code(s)	Item	Estimated Annual Responses (a)	Filing Fee ($) (b)	Estimated Non-Hourly Cost Burden (a) x (b) = (c)
1	1406	Inter Partes Review Request Fee – Up to 20 Claims	1,300	$23,750	$30,875,000
1	1414	Inter Partes Review Post-Institution Fee – Up to 20 Claims	1,300	$28,125	$36,562,500
1	1407	Inter Partes Review Request of Each Claim in Excess of 20	3,700	$470	$1,739,000
1	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
2	1416	Post-Grant or Covered Business Method Review Post-Institution Fee – Up to 20 Claims	50	$34,375	$1,718,750
2	1409	Post-Grant or Covered Business Method Review Request of Each Claim in Excess of 20	150	$595	$89,250
2	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 1420 1421	Request for Director Review	150	$452	$67,800
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

14. Provide estimates of annualized costs to the federal government. Also, provide a description of the method used to estimate cost, which should include quantification of hours, operational expenses (such as equipment, overhead, printing, and support staff), and any other expense that would not have been incurred without this collection of information. Agencies may also aggregate cost estimates from Items 12, 13, and 14 in a single table.

The USPTO estimates the annualized cost to the federal government to process and administer the items in this information collection to be $31,263,714. USPTO estimates that it takes administrative patent judges and other staff from approximately 15 minutes (0.25 hours) to 60 hours on average to process and administer the items in this information collection.

The USPTO generally employs administrative patent judges to process submissions for this information collection, with the exception of the notices of judicial review of a Board decision (e.g., notice of appeal under 35 U.S.C. §142). The notices of judicial review of a Board decision are processed by USPTO staff at approximately a GS-15, step 5 level.

The USPTO estimates that the cost of an administrative patent judge is $131 per hour (rate based upon USPTO data, is $96.15 per hour with 36.25% ($34.85) added for benefits and overhead).

The USPTO estimates that the cost of a GS-15, step 5 employee is $124.01 per hour (GS hourly rate of $91.02 with 36.25% ($32.99) added for benefits and overhead).

Table 5 calculates the burden hours and costs to the federal government for processing this information collection.

Table 5: Burden Hour/Cost to the Federal Government

Item No.	Item	Estimated Annual Responses (a)	Estimated Burden Hours (b)	Estimated Hourly Burden (a) x (b) = (c)	Rate8 ($/hour) (d)	Estimated Annual Federal Government Cost Burden (c) x (d) = (e)
1	Petition for Inter Partes Review	1,300	50	65,000	$131	$8,515,000
2	Petition for Post-Grant Review or Covered Business Method Patent Review	50	60	3,000	$131	$393,000
3	Petition for Derivation	10	60	600	$131	$78,600
4	Patent Owner Preliminary Response to Petition for Initial Inter Partes Review	975	50	48,750	$131	$6,386,250
5	Patent Owner Preliminary Response to Petition for Initial Post-Grant Review or Covered Business Method Patent Review	50	60	3,000	$131	$393,000
6	Request for Rehearing	50	20	1,000	$131	$131,000
7	Request for Director Review	150	20	3,000	$131	$393,000
8	Response to a Request for Director Review	150	20	3,000	$131	$393,000
9	Other Motions, Replies, Surreplies, and Oppositions in Inter Partes Review	6,500	20	130,000	$131	$17,030,000
10	Other Motions, Replies, Surreplies, and Oppositions in Post-Grant Review or Covered Business Method Review	250	20	5,000	$131	$655,000
11	Other Motions, Replies, Surreplies, and Oppositions in Derivation Proceedings	10	20	200	$131	$26,200
12	Pro Hac Vice Motion	450	1	450	$131	$58,950
13	Notice of intent to designate provisionally recognized PTAB attorney as counsel	500	1	500	$131	$65,500
14	Request for Oral Hearing	400	4	1,600	$131	$209,600
15	Request to Treat a Settlement as Business Confidential	375	1	375	$131	$49,125
16	Settlement	375	0.25	94	$131	$12,314
17	Arbitration Agreement and Award	1	0.5	1	$131	$131
18	Request to Make a Settlement Agreement Available	1	1	1	$131	$131
19	Notice of Judicial Review of a Board Decision (e.g. Notice of Appeal Under 35 U.S.C. §142)	350	0.25	88	$124.01	$10,913
	Totals	11,947	- - -	265,659	- - -	$34,800,714

15. Explain the reasons for any program changes or adjustments reported on the burden worksheet.

Table 6: ICR Summary of Burden

	Requested	Program Change Due to New Statute	Program Change Due to Agency Discretion	Change Due to Adjustment in Agency Estimate	Change Due to Potential Violation of the PRA	Previously Approved
Annual Number of Responses	11,947	0	0	-391	0	12,338
Annual Time Burden (Hr)	590,630	0	0	-777,328	0	1,367,958
Annual Cost Burden ($)	76,099,956	0	0	-10,853,616	0	86,953,572

Changes in Collection Since Last Renewal

Two nonsubstantive change requests (change worksheets) were filed since the last renewal.

The first change worksheet was submitted to OMB in October 2024. In this worksheet, the USPTO added an item (Item 13) to comply with RIN 0651-AD75 (Expanding Opportunities To Appear Before the Patent Trial and Appeal Board). This rulemaking allows for a streamlined alternative procedure for recognizing counsel pro hac vice, known as the notice of intent to designate provisionally recognized PTAB attorney as counsel. The change worksheet resulted in decreases in the hourly and non-hourly cost burdens this information collection.

The second change worksheet was submitted to OMB in November 2024. In this worksheet, the USPTO changed the amount of the fee codes to comply with rulemaking RIN 0651-AD64 (Setting and Adjusting Patent Fees During Fiscal Year 2024).

Change in Responses and Hourly Burden, and Annual Non-hour Costs Due to Adjustment in Agency Estimate

For this renewal, the USPTO estimates that there will be a decrease in the number of respondents submitting items in this information collection. Additionally, the USPTO estimates a decrease of 777,328 hours in annual time burden due to adjustments in the estimated time to complete certain items. The USPTO has adjusted the hours estimates and the number of filings based on changes to the process. Additonally, the USPTO is estimating slightly fewer petitions will be filed than in previous years.. Therefore, the USPTO estimates that the total annual non-hour costs will decrease by $10,853,616 due to fewer respondents submitting items that have associated fees.

16. For collections of information whose results will be published, outline plans for tabulation and publication. Address any complex analytical techniques that will be used. Provide the time schedule for the entire project, including beginning and ending dates of the collection of information, completion of report, publication dates, and other actions.

The USPTO does not plan to publish this information for statistical use.

17. If seeking approval to not display the expiration date for OMB approval of the information collection, explain the reasons that display would be inappropriate.

The forms in this information collection will display the OMB Control Number and the expiration date of OMB approval.

18. Explain each exception to the topics of the certification statement identified in “Certification for Paperwork Reduction Act Submissions.”

This collection of information does not include any exceptions to the certificate statement.

B. COLLECTIONS OF INFORMATION EMPLOYING STATISTICAL METHODS

This collection of information does not employ statistical methods.

1 https://www.congress.gov/112/statute/STATUTE-125/STATUTE-125-Pg284.pdf.

2 https://www.govinfo.gov/content/pkg/FR-2025-05-21/pdf/2025-09145.pdf.

3 https://www.govinfo.gov/content/pkg/FR-2025-08-13/pdf/2025-15361.pdff

4 https://www.govinfo.gov/content/pkg/FR-2013-03-29/pdf/2013-07340.pdf.

5 https://www.govinfo.gov/content/pkg/FR-2013-03-29/pdf/2013-07341.pdf.

6 https://www.commerce.gov/sites/default/files/2024-01/PTACTS-FY24-PIA_SAOP_Approval_Delegation.pdf.

7 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).

8 The hourly rate for administrative patent judges is taken from the average salary of administrative patent judges ($200,000), divided by 2,080 (the average annual work hours based on a 40-hour work week).

The rate for the GS 15, step 5 employee is taken from the 2025 OPM Salary Table for the Washington Locality Pay Area: https://www.opm.gov/policy-data-oversight/pay-leave/salaries-wages/salary-tables/pdf/2025/DCB_h.pdf.

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