Missed Opportunity & Further Patent Owner Headaches

The wait is finally over! (no not Taylor Swift’s new album…think nerdier….like way nerdier)

Last Friday the USPTO finally released its Notice of Proposed Rulemaking (NPRM) directed to Patent Trial & Appeal Board Practices (here) a year after its overly-ambitious Advanced NPRM (ANPRM) was released. While readers of this blog already knew what was going to be in the NPRM, the release of the NPRM at least confirms that the agency still intends to move something forward in the waning months of the Vidal administration. Whether the agency will get anything over the finish line in time is far from clear.

The NPRM is most noteworthy for what it does not include — every underdeveloped/legislative idea of the ANPRM. But that was entirely predictable. Perhaps more concerning is the absence of a codification of current Fintiv 314(a) practices. Such discretionary denial practices exploded under the previous Director only to be reined in under Director Vidal via a guidance memo. This ping-pong action will continue across administrations unless and until regulations are issued. The next Director will almost certainly reinvigorate Fintiv practices regardless of election outcome (more on that later this week)

As to the content of the NPRM itself, some marginal value and an oddly misguided option that hurts Patent Owners and risks derailing the entire proposal.

First, the NPRM does get some things right. The NPRM codifies existing practices for considering serial/parallel petitions under 314(a) and clarifies that a prior art reference’s inclusion solely an IDS is not a meaningful previous analysis for 325(d) purposes. These regulations, while hardly exciting, are at least helpful for clarity and predictability to both petitioners and patent owners alike.

On the other hand, the change to move discretionary denial discussions out of the Patent Owner Preliminary Response (POPR) is likely to further incense Patent Owners. The proposal would move 325(d)/314(a) issues up and out of the POPR in a separate 10-page filing due one-month before the POPR, and allow petitioners a response as a matter of right.

Why?

Currently, no such responsive briefing right exists for petitioners. And Patent Owner’s prefer discretionary arguments over merit-based arguments in their POPR. Moving these arguments out of the POPR to a 10-page document is an extreme disservice to Patent Owners. This is especially true as both issues of 325(d)/314(a) are often argued by Patent Owners. Indeed, where the 314(a) issue is Fintiv and questions of a compelling prior art showing must also be addressed. Ten pages is simply an inadequate amount of briefing space (which is roughly 50-60 pages in an existing POPR) What makes the agency think that Patent Owners will embrace an acceleration of their briefing schedule by a full month, a 5-6 fold decrease in briefing space, and a petitioner response as a matter of right?

I’d be surprised if this aspect of the NPRM makes it to the final rule (if there is one).