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: