USPTO Publishes Proposed Rules for PTAB Proceedings | Practical Law

USPTO Publishes Proposed Rules for PTAB Proceedings | Practical Law

The USPTO published extensive proposed rules under the America Invents Act (AIA) concerning Patent Trial and Appeal Board (PTAB) practice, inter partes review, post-grant review, the transitional program for covered business method patents and derivation proceedings. The proposed rules will be published in the Federal Register on February 9 and 10, 2012 and have a 60-day public comment period.

USPTO Publishes Proposed Rules for PTAB Proceedings

Practical Law Legal Update 9-517-9347 (Approx. 4 pages)

USPTO Publishes Proposed Rules for PTAB Proceedings

by PLC Intellectual Property & Technology
Published on 08 Feb 2012 • USA (National/Federal)
The USPTO published extensive proposed rules under the America Invents Act (AIA) concerning Patent Trial and Appeal Board (PTAB) practice, inter partes review, post-grant review, the transitional program for covered business method patents and derivation proceedings. The proposed rules will be published in the Federal Register on February 9 and 10, 2012 and have a 60-day public comment period.
The USPTO has published on its website extensive proposed rules concerning Patent Trial and Appeal Board (PTAB) procedures.

Proposed Rules Concerning PTAB Trial Practice

The PTAB trial practice rules are a consolidated set of rules for:
  • Inter partes review.
  • Post-grant review.
  • The transitional program for covered business method patents.
  • Derivation proceedings.
The rules address, among other issues:
  • The conduct of trials, including appearance by counsel who are not registered patent attorneys.
  • Petition and motion practice.
  • Discovery, compelling and taking testimony and protective orders.
  • Oral argument.
  • PTAB decisions and estoppel.
  • Settlement.
The rules also address appeals from PTAB decisions.
The USPTO also published a Practice Guide for Proposed Trial Rules, which provides an overview of the rules and some general practice tips.

Proposed Rules Concerning Inter Partes and Post-grant Review

In addition to setting out the detailed procedural requirements for these reviews, the proposed inter partes review rules and post-grant review rules provide that:
  • A claim in an unexpired patent is given its broadest reasonable construction in light of the specification.
  • The USPTO may limit the number of each of these types of reviews in the first four one-year periods after the reviews become effective.
  • The required petition fee accompany the petition to institute the review.

Proposed Rules Concerning the Transitional Program for Covered Business Method Patents

These proposed rules address the procedure for this program, which:
  • Does not cover patents for technological inventions.
  • Will generally be subject to the post-grant review rules.
The USPTO also published a separate rule package defining a technological invention, which is based on whether the claimed subject matter as a whole:
  • Recites a technological feature that is novel and unobvious over the prior art.
  • Solves a technical problem using a technical solution.

Proposed Rules for Derivation Proceedings

The USPTO's proposed derivation proceeding rules set out the rules for instituting and implementing derivation proceedings and, among other things, provide that:
  • A petition for a derivation proceeding must be filed within one year after the first publication of a claim to an invention that is the same or substantially the same as the respondent's earlier application's claim to the invention.
  • The parties may determine the derivation issue by arbitration.

Timing and Comment Period

The proposed rules concerning PTAB practice will be published in the Federal Register on February 9, 2012, with comments accepted through April 9, 2012. The proposed rules concerning inter partes and post-grant review, the transitional program for covered business method patents and derivation proceedings will be published in the Federal Register on February 10, 2012 with comments accepted through April 10, 2012.
For more information on other USPTO implementing rules for the Leahy-Smith America Invents Act, see Practice Note, Road Map to USPTO Leahy-Smith America Invents Act Implementing Rules.