Proposed Page Limits Based on Interference Model
As discussed previously, the fees proposed to initiate for Post Grant Review (PGR) and Inter Partes Review (IPR) may be too cost prohibitive for many filers. Yet, perhaps more troubling than the proposed fee structure is the extreme page limits proposed for these proceedings.
The proposed rules set a maximum 50 page limit for requests to initiate IPR, 70 pages for PGR (inclusive of claim charts). The proposed rule explains that federal courts often impose page limits, and perhaps more importantly that the “Board’s experience” in patent interference leads the Office to believe that the current proposals are reasonable. The Office explains that the current page limit for prior art motions in a patent interference is 25 pages. Thus, the Office reasons that the doubling of this existing limit to 50 pages for IPR is quite reasonable.
The Office has borrowed heavily from patent interference practice in arriving at the proposed rules of procedural practice before the Patent Trial & Appeal Board (PTAB); this makes sense. However, one size does not fit all with respect to contested proceedings. There are important distinctions between a patent interference and an IPR/PGR. That is to say, the problem with the Office’s reasoning is that validity challenges in patent interference do not encumber challengers with statutory estoppel that extends to the federal courts; nor are such validity based challenges the focus of a patent interference (i.e., priority dispute). Indeed, as the very ownership of the patent rights are in dispute in a patent interference, there may be strategic reasons for limiting validity challenges.
Rather than gauging the proposed page limits for IPR and PGR on patent interference practices, it would make much more sense for the USPTO to look to the current practice in inter partes patent reexamination (IPX); the very proceeding being replaced by IPR. So far in 2012, the mean page count for IPX requests is 262….a far cry from the 50 pages proposed by the USPTO.
Of the 67 or so odd IPX request filed in 2012 (at the time of this writing), roughly 10 would be compliant if filed this time next year as a request for IPR. The charts below shows the distribution of page counts for 2012 IPX filings, and a comparison to the mean page count for IPX and that proposed for IPR. (Click to Enlarge)
While it is true that the proposed limits may be waived upon successful petition for additional pages, the Office has explained that such cases would be “exceptional.”
It is understandable that the Office propose a page limit control to streamline proceedings that must be completed within 12 months, and one could certainly cite to the long pendency of IPX proceedings as justification for ignoring it as model for future proceedings. Yet the agency would be hard pressed to justify current IPX pendency issues on mere page count alone. Instead, delays are more a result of a separate examination and BPAI phases, each of which have historically taken on the order of 18-14 months. For this reason, IPR was designed to be an adjudicative proceeding (i.e., no examination phase).
Congress has recognized the relationship between IPX and IPR by limiting the number of IPR filings (281) based upon the number of IPX filings in fiscal 2010. As such, it is befuddling that the USPTO would adopt a patent interference based benchmark rather than be guided by current IPX realities.
Courts certainly limit page counts in motions, claim construction, etc. However, expert reports are typically hundreds of pages and often times contain the bulk of the asserted invalidity positions. If IPR/PGR is to be a true alternative to patent litigation, as Congress intended, filers must be able to present their submitted art to the USPTO in a cost effective fashion that adequately balances their risk of estoppel. Otherwise, IPR/PGR filings will be few and far between…especially at the currently proposed fee levels.