ANPRNM Comments Due Today

Today is the comment deadline on the USPTO’s recent Advanced Notice of Proposed Rulemaking (ANPRM). To date some 10,000 comments have been submitted.

At first blush the volume may seem impressive. Turns out, however, that the overwhelming majority of comments appear to be from random individuals spamming the agency with automated form submissions. These submissions do not even address the specific proposals of the ANPRM and offer little background, insight, or analysis other than a paragraph or two of “PTAB bad.” Others in the same spam bucket offer an identical rule proposal — to make the PTAB an opt-in system. Of course, the agency has no power to overrule a statute with a conflicting regulation to allow for opt-in.

Once the agency navigates through less than helpful dross, we can expect an NPRM in the fall responding to the actual ANPRM comments. My guess would be after the close of FY 2023 in early/mid October.

But, what will the actual NPRM look like? Certainly nothing like the ANPRM.

This fall you can expect a far more modest rule proposal. Today I will walk through the proposals most likely move forward to the NPRM, tomorrow the ones most likely to be dropped, or heavily revised.

Let’s start with the simplest of calls:

Proposed Procedural Changes:
(1) Requiring petitioners to file a separate paper justifying multiple parallel petitions;
(2) Allowing a potential payment of a fee to enhance the word-count limits for a petition to avoid
multiple parallel petitions;
(3) Providing for separate briefing on discretionary denial issues; and
(4) Requiring filing of all settlement papers when the dismissal of AIA proceedings is sought,
whether pre- or post-institution.

Numbers (1) and (3) aren’t controversial. While I would not expect that bulk of the 314(a) proposals to move forward, nevertheless, separate briefing on such isn’t prejudicial to either party. Easy one.

I also personally don’t find (2) very controversial, but some argue that this allows for deep pocket petitioners to somehow “buy” more arguments. This is false. of course, but I imagine there will be some agency sensitivity to the criticism nonetheless. That is, whether paying $80K for one petition, or $40K each for two petitions (to fit all of the patent claims), is just a question of administrative efficiency. While it is true that Courts don’t allow a purchase of additional pages, Courts also don’t limit the word count of an initial complaint as is done with petitions. Apples and oranges. I think this proposal still makes it to NPRM as it just makes too much administrative sense.

As to (4), while I doubt this proposal will see much push-back, I don’t believe the agency has the power to enact this rule. The CAFC has ruled that “proceeding” as recited in the AIA statutes refers to post-institution. Requiring settlement documents to be filed outside of the proceeding, before the IPR is initiated, seems inconsistent with the statute. That said, I don’t know anyone that cares about this besides me 🙂

Next are few straight forward proposals that essentially codify existing practices:

325(d) Proposals

The PTO is considering rules directed at how an analysis under 35 U.S.C. 325(d) is conducted, reflecting many of the principles of Advanced Bionics and Becton Dickinson

  • Application of 325(d) is limited to situations in which the Office previously addressed prior art or arguments by evaluating the art or arguments and articulating its consideration in the record;
  • Art merely cited (e.g., in an IDS) would not be deemed “previously addressed;”
  • Art or arguments may have been previously addressed in the challenged patent or any parent application or other family member application with claims that are substantially the same as the challenged claims;
  • Art or arguments in non-related applications would not considered;
  • Prior art previously addressed will be considered “substantially the same” only if it contains the same teaching relied upon in the petition and that teaching was addressed by the Office;
  • Any proceeding may be considered (e.g., prosecution, reissue, reexamination, post-grant proceedings, appeals);
  • Establishing a material error by the Office may overcome a denial based on previously addressed art or arguments.

As the agency has been operating under the above framework, and most of these proposals codify current practices, these will very likely make it to the NPRM.

Parallel Petitions

The PTO is considering changes that provide for the Board to deny institution of parallel petitions unless the petitioner makes a showing of good cause as to why parallel petitions are necessary. Such necessity may arise due to:

  • a dispute about a priority date;
  • a dispute about two different claim constructions;
  • a large number of claims in litigation;
  • the complexity of technology;
  • numerous limitations in the claims;
  • a large number of different claimed embodiments; or
  • a large number of grounds per challenged claims.

The bullets above are straight forward, and explain the most common scenarios today. I would add however, that ranking petitions for all but the last of these bullets makes little sense. For example, if I file two petitions for a large number of claims, ranking is nonsensical. These seem likely to make it to the NPRM as this is how things essentially work today.

The far more controversial aspect of the “parallel petition” proposals is the notion that a parallel petition might be filed by a different party that has a “substantial relationship” with a subject petitioner. (This is one of the messier ideas, more on that tomorrow).

Fintiv Codification

The PTO is proposing to codify existing Fintiv practices.

  • Codifying a “compelling merits” standard
  • No 314(a) consideration for parallel ITC action
  • 6 month window as a safe harbor
  • No Fintiv for PGR
  • Codify Sotera stipulations
  • Omit Fintiv Factors 1 and 5 (likelihood of stay and same party)

Seems that the omission of Fintiv factors, Sotera codification, and ITC change are straight forward, and are already largely in place. The remaining Fintiv proposals are almost certainly going to be dropped. For example, the change in standard to compelling merits, and 6 month safe harbor window are all directly contradicted by the AIA statutes and legislative history. I would expect the agency to drop these two proposals. While the current Fintiv analysis considers the strength of the petitions on this heightened standard (i.e., whether it is compelling), the strong, negative reaction to this standard codification by House lawmakers could encourage a legal challenge down the line if it is allowed to continue.

Those are the relatively few lay-ups. Tomorrow, we get into the remainder of the proposals, almost all of which are likely to be dropped or heavily revised.