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USPTO'S Rule Proposals for Post-Grant Review

2/13/2012

On February 10, 2012, the United States Patent and Trademark Office (“USPTO”) published proposals for changes to implement Post-Grant Review (“PGR”) Proceedings set forth in various sections of the America Invents Act (“AIA”) that become effective on September 16, 2012. Public comments regarding the proposals must be submitted by April 10, 2012. The Office also proposed in a separate rulemaking to include a consolidated set of rules pertaining to Board trial practice that would conduct PGR proceedings. Highlights of the proposals to implement PGR proceedings are discussed below.

    (1) Procedure of PGR: Proposed Rule §42.200 provide that PGR is a trial, which is defined as a contested case instituted by the Board. The Proposed Rule provides that in PGR, a claim in a patent is given its broadest reasonable construction in light of the specification in which it appears. This standard, which is different that than the standard in a civil action, is consistent with the standard of claim construction presently before the Patent Office. Regarding interference proceedings that are commenced within one year of enactment of the AIA, the proposed rules provide that such interferences will be conducted under part 41 of 37 CFR expect under exceptional circumstances. 

    (2) Who May Petition for PGR: Proposed Rule § 42.201(a) provide that a person who is not the patent owner may file a petition to institute a PGR, unless the petitioner or real party in interest had already filed a civil action challenging the validity of a claim of the patent. Proposed Rule § 42.201(b) is intended to address the estoppel provisions of the AIA and would provide that a petition may not be filed where the petitioner, the petitioner’s real party in interest, or a privy of the petitioner is estopped from challenging the claims on the grounds identified in the petition. 

    (3) Timeliness Requirement for PGR: Proposed Rule § 42.202(a) provide that a petition for PGR must be filed within 9 months from the grant date of the patent or issuance of reissue patent. Proposed § 42.100(c) would provide a one-year time frame for administering the proceeding after institution, with up to a six-month extension for good cause. Both of these provisions are consistent with the AIA statute. 

    (4) Limiting number of PGR Proceedings: Section 6(f)(2)(B) of the AIA provides for graduated implementation of PGR and allows that the Director may limit the number of PGR during the first four 1 year periods after PGR takes effect. The Proposed Rule commented that it does not expect to limit the number of petitions at this time and further estimates that in fiscal year 2013, it is not expected that any PGR petitions will be received, other than those filed under the transitional program for covered business method patents. 

    (5) PGR Fee: Proposed Rule § 42.203 would provide that a fee must accompany a petition for PGR and that no filing date will be accorded until full payment is received. Currently, Proposed Rule § 41.15 sets forth the fees for filing a post grant review based on the number of challenged claims. Challenging 1-20 Claims is currently set at $35,800 and goes upward to $89,500 for challenging 51 to 60 Claims. 

    (6) Contents of Petition: Proposed Rule §42.204 sets forth the content of the PGR petition. The page limit for a petition requesting PGR is proposed to be 70 pages, which differs from the limitless number of pages for requesting inter partes reexamination. (See Proposed Rule §42.24). Proposed Rule § 42.206(a) would set forth the requirements for a complete petition. The proposed rules require the following: 
        1) Standing: the petition must demonstrate that the petitioner has standing by certifying that the patent is available for PGR and that the petitioner is not barred or estopped from requesting a PGR. 
        2) Identification of precise relief requested: the petition must identify each claim being challenged, the specific grounds on which each claim is challenged (i.e., 102/103/101, 112 (except for best mode)), how the claims are to be construed, how the claims as construed are unpatentable, why the claims as construed are unpatentable under the identified grounds, and the exhibit numbers of the evidence relied upon with a citation to the portion of the evidence that is relied upon to support the challenge. Proposed Rule §42.22 further provides that a statement of material facts, setting forth as separately numbered sentences materials facts with specific citations to evidence, must be filed. 
        3) Other notices: Proposed Rule § 42.8 provides that a separate paper including identification of real party in interest, related matters, lead and back-up lead counsel and service information must be filed with the Board. 
        The comments to the Proposed Rules state that the skills necessary to prepare a petition to review would be similar to those needed to prepare a request for inter partes reexamination or represent a party in an interference proceeding. 

    (7) Service Requirements: Proposed Rule § 42.205(a) would require the petitioner to serve the patent owner at the correspondence address of record for the patent, and permits service at any other address known to the petitioner as likely to effect service as well. The service of any other known address is permitted because the Office recognizes that Petitioner and Patent Owner may already be in communication and would know a better service address than the official correspondence address. Proposed § 42.205(b) would address the situation where service to a patent’s correspondence address does not result in actual service on the patent owner and the Board may in such circumstances authorize other forms of service, such as service by publication in the Official Gazette. 

    (8) Correcting Errors: Proposed § 42.204(c) provides that a petitioner seeking to correct clerical or typographical mistakes in a petition could file a procedural motion to correct the mistakes. The proposed rule would also provide that the grant of such a motion would not alter the filing date of the petition. Proposed § 42.206(b) provides one month to correct defective requests to institute a post-grant review, unless the statutory deadline in which to file a petition for post-grant review has expired. Where a procedural defect is noted, the Board would notify the petitioner that the petition was incomplete and identify any non-compliance issues. 

    (9) Preliminary Response by Patent Owner: 35 U.S.C. §323 of the AIA provides that the patent owner may file a preliminary response to the petition within a time period set by the Director and include reasons why no PGR should be instituted. Proposed Rule § 42.207(b) establishes that the preliminary response must be filed no later than two months from the date of the notice that the request to institute a post-grant review has been granted a filing date. The Proposed Rules state that a patent owner seeking a shortened period for the determination of whether a PGR will be instituted may file a preliminary response well before the date the response is due or file a paper stating that no preliminary response will be filed. The Proposed Rules comments that no adverse inference will be drawn where a patent owner elects not to file a response or elects to waive the response. However, the real world effect would be that the petition is unrebutted and the Board may more easily conclude that at least one claim is more likely than not unpatentable and decide to institute the PGR proceedings. Proposed Rule § 42.207(c) provides that the preliminary patent owner response would not be allowed to present new testimony evidence, for example, expert witness testimony on patentability. However, in certain instances, a patent owner may be granted additional discovery before filing their preliminary response and submit any testimonial evidence obtained through the discovery. For example, additional discovery may be authorized where patent owner raises sufficient concerns regarding the petitioner’s certification of standing. The Proposed Rules further provide that the Board expects to consider preliminary response in all but exceptional cases. Although preliminary patent owner response would not be allowed to include any amendment, proposed § 42.207(e) provides that the patent owner may file a statutory disclaimer under 35 U.S.C. 253(a), disclaiming one or more claims in the patent, and no post-grant review will be instituted based on disclaimed claims. 

    (10) Board Decision to Institute PGR: Proposed Rule § 42.208 would provide that the Board may authorize the review to proceed on all or some of the challenged claims and on all or some of the grounds of unpatentability asserted for each claim; and may deny some or all grounds for unpatentability on some or all of the challenged claims. The Board would identify which of the grounds the review will proceed upon on a claim-by-claim basis. Any claim or issue not included in the authorization for review would not be part of the PGR. The Office intends to publish a notice of the institution of a PGR in the Official Gazette. Proposed Rule § 42.208(c) provides that the Board may institute PGR if the petition demonstrate that it is more likely than not that at least one of the claims challenged in the petition is unpatentable. This decision will take into account the preliminary patent owner response. Proposed Rule §402.208(d) provides an exception where PGR can be institute upon a showing that the petition raises a novel or unsettled legal question that is important to other patents or patent applications. The PGR notes that this exception would be used sparingly. 

    (11) Patent Owner Response: The patent owner response may address any ground for unpatentability that is not already denied and is subject to a page limit for oppositions (currently set at 70 pages in Proposed Rule §42.24). Proposed Rule § 42.220(b) proposes that a patent owner response is due two months from the date the post-grant review is instituted unless another time is provided in the Board Order. The Board considers this two month time period to be sufficient because the patent owner would already have been provided two months to file a preliminary patent owner response prior to institution and is consistent with the requirement that the Board render a final decision within one year of the institution of the review. 

    (12) Amendment of the Patent: Proposed Rule § 42.221(a) provides that the first motion to amend a patent need not be authorized by the Board, but the Board must be consulted. If the motion complies with the timing and procedural requirements, the motion would be entered. A motion to amend will not be authorized if does not respond to the ground of unpatentability involved in the trial or seeks to enlarge the scope of the claims or introduce new matter.
Additional motions to amend would require prior Board authorization and requires a demonstration of good cause by the patent owner. In considering whether good cause is shown, the Board will take into account how the filing of such motions would impact the timely completion of the proceeding and the additional burden placed on the petitioner. All motions to amend, even if entered, will not automatically result in entry of the proposed amendment into the patent. Proposed Rule § 42.221(b) provides that a motion to amend the claims must set forth: (1) the support in the original disclosure of the patent for each claim that is added or amended, and (2) the support in an earlier filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought. 

    (13) Filing of Supplemental information: Proposed Rule §42.223 provides that a petitioner may request authorization to file a motion in identifying supplemental information relevant to the ground of unpatentabilty within one month of the date the trial is instituted. Any supplemental information will not be considered in the decision to institute the PGR. 

    (14) Discovery: The Proposed Rules for discovery are set forth in §42.51 which states that parties are entitled to limited discovery. Such discovery may include routine discovery of exhibits cited in a paper or testimony and provide for cross examination of affidavit testimony within a prescribed time period. Proposed Rule § 42.224 provides additional discovery in PGR where evidence is directly related to factual assertions advanced by a party to the proceeding and that the standard for additional discovery is good cause.

For more information, click on this link to read the proposed rules: 
http://www.uspto.gov/aia_implementation/rin-0651-ac72.pdf