PTAB & Post Grant Proceedings Detailed by USPTO

In advance of the printing in the Federal Register later this week, the USPTO has released its proposed rules for the contested case provisions, i.e., inter partes review, post grant review, the transitional program for covered business methods, and derivation. The documents appearing below are not the official Federal Register publications of those proposed rules. The official Federal Register publications will follow later this week on February 9 and 10, 2012. Publication of the proposed rules in the Federal Register will begin the sixty-day public comment period for the proposed rules.

Links to the various rule sets are found below:

Proposed Rules for Trials before the Patent Trial and Appeal Board (aka Proposed Umbrella Rules)

Practice Guide for Proposed Trial Rules

Proposed Rules for Post Grant Review

Proposed Rules for Inter Partes Review

Proposed Rules for the Transitional Program for Covered Business Methods

Proposed Rules for the Definition of Technological Invention

Proposed Rules for Derivation

Quick facts are as follows;

Fee to file a request for IPR $27,200 (less than 20 claims)

Fee to file PGR, or Transitional Program for Covered Business Method Patents (TPCBM) ($47,100)

Technological invention is defined under TPCBM as:

In determining whether a patent is for a technological invention solely for purposes of the Transitional Program for Covered Business Methods (section 42.301(a)), the following will be considered on a case-by-case basis: whether the claimed subject matter as a whole (1) recites a technological feature that is novel and unobvious over the prior art; and (2) solves a technical problem using a technical solution.

Both IPR and PGR will allow for pro hace vice appearance of non-registered practitioners, but is at the discretion of the Board based on the applicants qualifications.

More detailed analysis of these packages will follow in the days to come.