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. 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.
US Code:
35 USC
6 Name of Law: American Inventor Protection Act
US Code: 35
USC 134 Name of Law: Leahy-Smith America Invents Act
The Office is proposing new
rules of practice before the PTAB to focus inter partes review
proceedings on patent claims that have not previously been
challenged in litigation or where prior litigation was resolved at
an early stage. This proposed rule is intended to promote fairness,
efficiency, and predictability in patent disputes.
$34,800,714
No
Yes
No
No
No
No
No
Sharon Israel 571 272-9797
sharon.israel@uspto.gov
No
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 10 2025 NPRM.docx
The Manual of Patent Examining Procedure.PDF
Response to Request for Director Review