Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board
Summary:
This final rule amends the existing consolidated set of rules relating to the United States Patent and Trademark Office (Office or USPTO) trial practice for inter partes review (‘‘IPR’’), post-grant review (‘‘PGR’’), the transitional program for covered business method patents (‘‘CBM’’), and derivation proceedings that implemented provisions of the Leahy Smith America Invents Act (‘‘AIA’’) providing for trials before the Office.
Dates:
Effective Date: This rule is effective May 2, 2016 and applies to all AIA petitions filed on or after the effective date and to any ongoing AIA preliminary proceeding or trial before the Office.
Executive Summary:
This final rule amends the existing consolidated set of rules relating to the United States Patent and Trademark Office (Office or USPTO) trial practice for IPR, PGR, CBM, and derivation proceedings that implemented provisions of the AIA providing for trials before the Office. These include:
- Allowing new testimonial evidence to be submitted with a patent owner’s preliminary response
- Adding a Rule 11-type certification for papers filed in a proceeding
- Allowing a claim construction approach that emulates the approach used by a district court following Phillips v. AWH Corp. (hereinafter ‘‘a Phillips-type or district court-type construction approach’’) for claims of patents that will expire before entry of a final written decision
- Replacing the current page limit with a word count limit for major briefing
Summary of Major Provisions:
In an effort to gauge the effectiveness of the rules governing AIA trials, the Office conducted a nationwide listening tour in April and May of 2014, and in June 2014, published a Federal Register Notice asking for public feedback about the AIA trial proceedings.
- The Office has reviewed carefully the comments and, in response to public input, already has issued a first, final rule, which was published on May 19, 2015.
- That final rule addressed issues concerning the patent owner’s motion to amend, the petitioner’s reply brief, and other various changes.
For instance, the final rule provided ten additional pages for a patent owner’s motion to amend, allowed a claims appendix for a motion to amend, and provided ten additional pages for a petitioner’s reply brief, in addition to other changes to conform the rules to the Office’s established practices in handling AIA proceedings.
The Office published a second, proposed rule on August 20, 2015, which addressed more significant proposed changes to the rules and proposed revisions to the Office Patent Trial Practice Guide.
- The Office received comments from the public on these proposed rules, and presents in this Federal Register document the following final rules to address the claim construction standard for trials involving soon-to-be expired patents, new testimonial evidence submitted with a patent owner’s preliminary response, Rule 11-type certification, and word count for major briefing.
- The Office will also amend its Office Patent Trial Practice Guide to comport with these rules changes and to reflect developments in practice before the Office concerning how the Office handles additional discovery, live testimony, and confidential information.
The Office anticipates that it will continue to refine the rules governing AIA trials to continue to ensure fairness and efficiency while meeting all congressional mandates.
- Therefore, the Office continues to encourage comments concerning how the rules may be refined to achieve this goal.
- Also, the Office is continuing to proactively seek ways to enhance its operations and explore alternative approaches that might improve its handling of post grant administrative trials.
Proposed Pilot Program
As part of this process, the Office published in the Federal Register a Request for Comments on a Proposed Pilot Program pertaining to the institution and conduct of the post grant administrative trials by a single judge to provide the public an opportunity to comment on the proposal.
- This is the Proposed Pilot Program Exploring an Alternative Approach to Institution Decisions in Post Grant Administrative Reviews, 80 FR 51540 (Aug. 25, 2015) (‘‘Proposed Pilot Program’’).
The Office currently has a panel of three administrative patent judges (APJs) decide whether to institute a trial, and then typically has the same three-APJ panel conduct the trial, if instituted.
The Office sought comments on whether to conduct a pilot program under which the determination of whether to institute a trial would be made by a single APJ, with two additional APJs being assigned if a trial was instituted.
This public announcement of the proposed pilot program sought to elicit comments, including whether a single APJ institution could potentially improve efficiency while providing high quality decisions and fairness to all sides.
In response to the Request for Comments, the Office received eighteen written submissions from intellectual property organizations, associations, businesses, law firms, patent practitioners, and others.
- The majority of comments opposed the proposed pilot program; however, several comments supported modified pilot programs.
- Taking into account the comments received, the Office has decided not to go forward with the proposed pilot program at this time.
Background:
Development of the Final Rules On September 16, 2011, the AIA was enacted into law, and within one year, the Office implemented rules to govern Office trial practice for AIA trials, including IPR, PGR, CBM, and derivation proceedings.
Additionally, the Office published a Patent Trial Practice Guide for the rules to advise the public on the general framework of the regulations, including the structure and times for taking action in each of the new proceedings.
In an effort to gauge the effectiveness of these rules governing AIA trials, the Office conducted a nationwide listening tour in April and May of 2014.
- During the listening tour, the Office solicited feedback on how to make the trial proceedings more fair and effective by adjusting the rules and guidance where necessary.
- To elicit even more input, in June of 2014, the Office published a Request for Comments in the Federal Register and, at stakeholder request, extended the period for receiving comments to October 16, 2014.
- The Office addressed all public comments that involved changes to the page limitations for a patent owner’s motion to amend or a petitioner’s reply brief in a first, final rulemaking.
- The Office addressed the remaining comments in the second, proposed rulemaking.
In the second, proposed rulemaking, the Office sought comments on the proposed rules involving the application of a Phillips-type claim construction for patents expiring during a proceeding, the ability to submit new testimonial evidence in the patent owner preliminary response, a Rule 11- type certification for papers filed in a proceeding, and word count for major briefing.
- The Office received twenty-eight comments from bar associations, corporations, law firms, and individuals addressing the proposed rules.
- Many of the comments supported application of a Phillips-type construction for claims of a patent that will expire during an AIA proceeding, a patent owner’s ability to submit new testimonial evidence in its preliminary response, word count for major briefing, and a Rule-11 type certification.
