Satisfying the Electronic Filing Requirements of PRPS
As discussed earlier this week, the Patent Trial & Appeal Board (PTAB) of the USPTO will shortly begin rolling out a new electronic filing system to support the post grant patent trial proceedings of the America invents Act. Unless otherwise authorized by the Board, all PTAB filings must be submitted electronically 37 C.F.R § 42.6(a)(3). The system will be known as the Patent Review Processing System (PRPS). Currently, the USPTO is testing the prototype system, and soliciting public input on its general format and operation. PRPS will be rolled out in the coming weeks, and be up and running by Septemeber 16th. Practitioners will need to preregister with PRPS prior to their first filing.
While PRPS is still a work in progress, there are some practice tips emerging from the prototype testing sessions. (some preliminary screenshots of the system here)
Especially in the short term, obtaining a filing date will be a big deal for petitioners seeking Inter Partes Review (IPR) subject to a parallel litigation. This is because such petitioners only have 1 year (by statute) to petition for IPR from the date of service of the litigation complaint, and there are petitioners that were sued 10-11 months prior to September 16th. These filers must be especially careful not to miss their 1 year deadline by running afoul of PRPS requirements.
First, filers will need to be wary of the payment of the filing fee, $27,200 for Inter Partes Review, and $35,800 for Transitional Program for Covered Business Method Patents (TPCBMP) (PGR filings being unavailable for a few more years). A filing date will only be secured once payment clears (typically 8 days for most payment methods). As the fees are substantial, insufficient payment could be a problem for filers not mindful of their account levels, especially those filing multiple petitions on the same day.
Second, and more problematic, is the intention of the Office (at least as currently expressed in focus sessions) to treat weekend PRPS filings as being filed on the next business day. For example, September 16th is a Sunday. Theoretically, there could be petitioners that were sued on September 16th last year that would be shut out based on the 1 year litigation bar (35 U.S.C. § 315(b)) unless a Sunday filing date is assigned. Likewise, going forward, it would create a system in which petitioners would need to file on the last business day prior to the actual 1 year deadline. As the 1 year deadline is statutory, the USPTO cannot simply accept filings on the next business day, or waive the requirement.
While the simple solution is for petitioners not to wait until the last minute going forward, current, late stage litigants have had to wait for September 16th out of necessity. Likewise, it is unclear how such a policy would comport with 37 C.F.R. ¶ 1.6(a)(4), which awards electronic filing dates at the time of submission.