BPAI Hiring & Rule Efforts

The USPTO is now heading into the home stretch of the America Invents Act (AIA) rule making efforts. The USPTO has committed to publishing the final rules relating to the new post grant mechanisms of the AIA by August 16th, at the latest. It is expected that the agency will complete their work on the final rules in July, but, the review of the Office of Management & Budget (OMB) will delay publication another 2-3 weeks.

The final packages are not expected to vary significantly from the February NPRMs. The USPTO has commented publicly that there will be a modification to the proposed fee schedule. It does not appear that the basic structure of the patentability trials (umbrella rules) will change in any major regard.

In other news, the USPTO will open the first satellite office in Detroit on July 13th. The new office, known as the Elijah J. McCoy Satellite Office will be home to a newly hired group of examiners, and even a few Administrative Patent Judges (APJs). It is unclear if the Detroit APJs will be reviewing only locally examined cases.

As to APJs, the hiring to combat the ex parte appeal backlog continues. Likewise, the Office is preparing to transform from the Board of Patent Appeals & Interferences (BPAI) to the Patent Trial & Appeal Board (PTAB) on September 16th. Last week the USPTO swore in 11 new judges and plans to bring in at least two more groups of new judges in July and August. With the recent hires, the Office appears to be making an effort to hire judges with private practice experience. New hires will focus on ex parte appeals in the short term until sufficiently trained. Thereafter, some new horsepower will likely transfer over to the trial section of the PTAB.

As the Board expands, so too does the need for office space. As a result, Electrical Groups 1 and 2 are being moved to the Shirlington Village office location (just outside of Alexandria). Of course, oral hearings will still be conducted in Alexandria. There is no plan to move the trial section from the Alexandria campus.

It is expected that as many as 50-75 petitions for trials will be filed with the USPTO in September alone. (Inter Partes Review and Transitional Program for Covered Business Method Patent (TPCBM) filings). There is also very likely to be a final surge of inter partes patent reexaminations filings prior to the September 16th cut off date.