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  • The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important post grant issues. These postings are in no way representative of the opinions of Oblon Spivak et al., or its clients.

USPTO Receives Public Comments on Post Grant Implementation Plans

Posted On: Apr. 12, 2012   By: Scott A. McKeown
AIA_implementationMajor Bar Organizations Comment on USPTO Proposals

The public comment period for the “umbrella rule set” proposed by the USPTO to implement the patent trial proceedings of the America Invents Act (AIA) closed this past Monday (April 9th). Under the AIA, the Patent Trial & Appeal Board will conduct validity trials beginning September 16, 2012. The trials may be conducted as part of an Inter Partes Review (IPR) proceeding, or Transitional Program For Covered Business Method Patents (TPCBMP). Pure Post Grant Review (PGR) challenges, which are only available for patents issuing from applications filed on or after March 16, 2013, will occur once these applications begin to issue as patents some years thereafter. Comments on the specific rule packages (IPR, PGR, TPCBMP) were due to the office on Tuesday (April 10th).

As with the initial request for comments on implementation, the AIPLA and IPO have joined forces with the ABA to submit a single comment.

ABA/AIPLA/IPO comments (here)

One of the more interesting positions of the joint comments question the applicability of the broadest reasonable claim interpretation (BRI) to the post grant proceedings of the AIA. The joint comments take the position that BRI is only applicable to cases in which there is an unlimited opportunity to amend, such as during application prosecution, or reexamination. The comments distinguish the right to amend in reexamination as being markedly different from the procedurally limited amendment mechanisms proposed for IPR and PGR.

It may be that a Patentee will eventually pursue such a position on appeal to the CAFC, however, I would not expect the USPTO to adjust this aspect of the rule proposals based on their well established practice of applying BRI in Office proceedings. (See Also MIPLA IPR Comment at pages 5-7, which, in my view, is a more compelling public policy argument.)

Another aspect of interest in the joint comments is the idea that initial disclosure should be required for both petitioners and Patentees. While perhaps helpful in the more robust PGR proceeding, where discovery is designed to be more liberally applied, it is yet unclear whether such an additional requirement would be necessary in a proceeding based on patents and printed publications alone (IPR).

Additional comment submissions are listed below:

Umbrella Rules

Oblon Spivak



Oblon Spivak




Oblon Spivak





AIPLA (technological invention definition)

3 Responses to “USPTO Receives Public Comments on Post Grant Implementation Plans”

  1. Paul F. Morgan says:

    The joint IP organization position that “the broadest reasonable claim interpretation” (BRI) should not apply to post grant proceedings, and that specification or prior file history limitations of claim scope should also be considered was indeed interesting. But it may be viewed by some in the PTO as an attempt to accomplish by rulemaking what had been unsuccessfully attempted by some in the legislation itself. Also, to require Board members to deal with the quagmire of conflicting Fed. Cir. panel opinions on those subjects. Also, how will this relate to estoppel? Could not the patent owner or infringer still argue for a a broader or narrower claim scope in litigation? To avoid that, should not the rules require that a patent owner arguing for a narrower than BRI claim interpretation in a post-grant proceeding at least be required to make a clear and specific agreement on the record that the claim cannot be more broadely read for any purpose, including latter litigation?

  2. Paul F. Morgan says:

    P.S. Scott, the comments you have filed on behalf of your firm are well written, well researched, hit on practical important points, and thus provide an important public service.

  3. Thanks Paul.

    I tend to agree that the BRI issue is best settled by Congress. As such, I view the submissions on this point as public lobbying efforts relative to the rumored technical amendments floating around Congress.

    All in all, the PTO has done an outstanding job, but getting everything perfect in such a short time frame is impossible.