TABLE 1: Proposed Versus Final Rules for the New
As previously discussed, the USPTO will shortly begin rolling out a new electronic filing system to support the post grant patent trial proceedings of the Patent Trial & Appeal Board (PTAB). The system will be known as the Patent Review Processing System (PRPS). Over the next 2-3 days the USPTO will be testing and receiving feedback from the public on features of the PRPS.
A link to PRPS will be available on the USPTO web page in the coming weeks, but what will the portal receive on September 16th?
Continue Reading Electronic Filing of USPTO Post Grant Trial Requests
As a reminder, non-registered practitioners have, in limited circumstances, been permitted to appear before the current Board of Patent Appeals & Interferences (BPAI) on a pro hac vice basis. The USPTO proposed adopting this practice for the new post grant patent trial proceedings of the Patent Trial & Appeal Board (PTAB) 37 C.F.R § 42.10(c). The final rule, which issued last week, maintains the pro hac vice provision but adds a bit of a twist.
In the earlier discussion on this topic, I relayed the explanation of Chief Judge Smith as provided on the USPTO website (America Invents Act (AIA) micro site) relative to the proposed pro hac vice rule. In essence, Judge Smith outlined the types of conditions that were contemplated by proposed rule 42.10(c).
The final rule more concretely codifies the expectations of the USPTO while ensuring that registered practitioners drive the PTAB proceedings.
Continue Reading Revised Pro Hac Vice Policy of the PTAB
For those looking for CLE in the weeks ahead that is focused on practice before the Patent Trial & Appeal Board (PTAB), and the final rules for implementing the new post grant validity trials, consider the following:
1. August 21, 2012 National Assoc. of Patent Practitioners (NAPP) Annual Meeting: Alexandria,
In one month’s time, the USPTO will simultaneously switch over to a new patent reexamination fee structure, and to a new inter partes trial model of the Patent Trial & Appeal Board (PTAB). These changes will drive a significant number of ex parte (EXP) and inter partes reexamination (IPX) requests to be filed over the next few weeks.
The short term impetus caused by the change to the fee structure is fairly straightforward to grasp. Simply stated, the EXP that can be filed today for a $2520 government filing fee, will cost $17,750 on the September 16th.
As to the change to the inter partes trial model, September 15th will be the last day for filing an IPX; this is significant for several reasons.
Yesterday’s printing of the final rules to implement the post grant patent proceedings of the AIA is the culmination of well over a years worth of intensive, and tireless effort by the USPTO. The effort throughout 2011 led to the presentation of the proposed rules in February of 2012. Thereafter, the USPTO accepted public comments in April, issuing the final rules yesterday.
As to the public feedback on the proposed rules, it seems the USPTO was listening.
Continue Reading Notable Changes in the Final Patent Trial & Appeal Board Rules
Tomorrow, the final rules to implement the new post grant trial proceedings of the PTAB will publish. A copy of each of the rule packages is linked below, commentary on the changes to follow tomorrow. In addition to the PTAB rule packages, a package will issue
Yesterday, in Lingamfelter v. Kappos, (here) the CAFC decided that the Patentee had waived the right to contest the propriety of the third party declarations filed in their inter partes patent reexamination. (earlier post here)
The crux
As discussed yesterday, the final rule package for Changes to Implement Miscellaneous Post Patent Provisions of the Leahy-Smith America Invents Act (AIA) revised the rules for ex parte patent reexamination. The revisions were made to account for the new “office estoppel” provisions of Inter Partes Review (IPR), Post Grant Review (PGR), and the Transitional Program for Covered Business Method Patents (TPCBMP).
The office estoppel of the new proceedings mandate that an unsuccessful petitioner, real party in interest, or privy may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that prior post grant proceeding. 315(e)(1); 325(e)(1). Yesterdays discussion detailed how the USPTO will determine the applicability of office estoppel to anonymous reexamination filers.
Another issue presented in the proposed rules, was the meaning of “request or maintain” as used in the statutes. Initially, the USPTO proposed that an unsuccessful post grant filer could not request a new reexamination, and existing reexaminations of the same petitioner/privy would be vacated, or not “maintained.” Proposed Rule 1.510 However, comments submitted to the USPTO in response to the rule proposal pointed out that it is the Office and not the requester of the ex parte reexamination (EXP) that “maintains” the proceeding. In response to these comments, the USPTO dropped this aspect of the proposed rule, perhaps highlighting another technical defect in the AIA.
Continue Reading Post Grant Estoppel To Shut Down Some Patent Reexaminations
The estoppel provisions of Inter Partes Review (IPR), Post Grant Review (PGR), and the Transitional Program for Covered Business Method Patents (TPCBMP) will impact related court proceedings involving the same patent, and USPTO validity proceedings relating to the same patent.
The aspect of the IPR/PGR estoppel that applies to USPTO proceedings is codified below:
315 (e)(1) Estoppel (applies to IPR; 325(e)(1) codifies the same for PGR & TPCBMP)
PROCEEDINGS BEFORE THE OFFICE- The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review.
(emphasis added)
Taking the example of 315(e)(1) estoppel, this estoppel applies not only to a subsequent request for IPR from the same requester (or privies), but to any “office proceeding.” The primary USPTO proceeding that will be impacted by 315(e)(1) will be ex parte patent reexamination (EXP). This is because, by definition, a Post Grant Review (PGR) can only be conducted prior to an IPR. Likewise, inter partes reexamination (IPX) will no longer be an option in a few weeks, ending on September 16th. While theoretically there may still be some IPX proceedings that are being “maintained” by the time the first IPR is concluded, it is more likely that the Patent Trial & Appeal Board (PTAB) would consolidate or stay such parallel Office proceedings. (325(e)(1) will not impact office proceedings for PGR for some years, but will apply in the short term to TPCBMP)
As pointed out previously, in many cases EXP is requested anonymously. (MPEP 2213). To account for this practicality the USPTO issued proposed rules requiring that anonymous filers disclose their identity to the Office so the applicability of estoppel could be assessed relative to EXP filers. In the final rules issued this past Monday the USPTO dropped the identity requirement in favor of a simple practitioner certification; but is the final rule enough to protect Patentees from harassment?