Last day to comment on the proposed rules of procedure for the new Patent Trial and Appeal Board on Monday, April 9th

Monday, April 9, 2012, is the last day to comment on the proposed rules of procedure for the new Patent Trial and Appeal Board (PTAB) created under the AIA effective as of September 16, 2012.  These new rules will govern the procedure to be followed for appealing a negative outcome during patent examination, attacking entitlement to a patent or patent application via derivation proceedings under 35 USC §§ 291 and 135 as amended under the AIA effective as of September 16, 2012, inter partes review under 35 USC §§ 311 to 319 as newly provided under the AIA also effective as of September 16, 2012, and post grant review under 35 USC §§ 321 to 329 as newly provided under the AIA effective for patents which had at least one claim with an effective date on or after March 16, 2013, at any time during the pendency of the application on which the patent is based.

The proposed rules of practice before the PTAB also contain proposed USPTO fees for inter partes review, post grant review and derivation proceedings.  The proposed fees for inter partes review and post grant review have been controversial ever since their publication.  The USPTO proposes to charge $27,200 for conducting inter partes review of up to 20 claims and $35,800 for conducting post grant review of up to 20 claims.  Higher fees are proposed for review of more than 20 claims in a graduated stepwise fashion.

The relevant notices of proposed rule making may be viewed by clicking here and here.  The the proposed rules for practice before the PTAB may be viewed by clicking here, an illustrative scheduling order for practice before the PTAB may be viewed by clicking here, and the proposed rules for judicial review of a PTAB decision may be viewed by clicking here.

Andrew Baluch of Foley and Lardner wrote an interesting post in the PharmaPatents blog entitled, “Three Proposed USPTO Board Rules That Should Not Be Adopted”, which you can access by clicking here.  The proposed rules addressed by this post are 37 CFR § 42.51(b)(3), which proposes to impose a duty a disclose inconsistent information under “routine discovery”, 37 CFR § 42.73(d)(3), which proposes imposing an “estoppel” against unsuccessful patent applicants and owners, and 37 CFR §§ 42.121(c) and 42.221(c), which proposes to deny entry of amendments due to enlarging the scope of the claims or adding new matter (rather than enter the amendments and allow them to be challenged for the foregoing reasons).  I recommend Andrew’s post.

For a more detailed analysis of the proposed rules, I recommend reading the comments already submitted to the USPTO by Matthew Smith, also with Foley and Lardner, and Andrew Baluch, which they kindly made available to me in advance of when they will be posted on the USPTO’s AIA microsite and which you may read as well by clicking here.

I anticipate that the Intellectual Property Owner’s Association (IPO), the American Intellectual Property Law Association (AIPLA) and the IP Section of the ABA will submit comments regarding the proposed rules and guidelines for practice before the PTAB in view of their participation in the February 15, 2012, hearing regarding the proposed fee increase reported here and their submissions prior to the notices of proposed rule making posted on the USPTO AIA microsite, which are available here.  In particular, I anticipate several challenges to the USPTO’s proposed fee schedule for post grant review proceedings.

Scott McKeon of Oblon Spivak’s Post Grant Practice Group pointed out in a recent post on Patents Post Grant that the font size and line spacing restrictions specified in proposed 37 CFR §42.6(a)(2) combined with the page limits specified in proposed 37 CFR §42.24(a) make it nearly impossible to comply with the requirements for filing petitions and motions specified in the proposed rules for practice.  The proposed restrictions are constant regardless of the number of grounds addressed, the number of claims attacked and the number of features per claim that need to be addressed, which appears to be inconsistent with the USPTO’s explanation for requiring higher fees for conducting post grant review proceedings involving an attack on more than 20 patent claims.  Scott’s post may be viewed by clicking here.

At the international conference on U.S. Patent Reform 2012 sponsored by Forum Institute held in Munich on 3-4 April mentioned in a prior post (available here), USPTO administrative law judge Robert Clark, a co-author of the proposed rules of practice before the PTAB, advised that the USPTO will give careful consideration to comments received on these rules.  While he strongly defended the proposed rules at that conference, I believe that his expression of interest in our views is sincere, provided that our comments are fair and well-reasoned.

Comments on the proposed rules of practice before the PTAB, the guidelines for practice before the PTAB, the rules for judicial review and the proposed fees for inter partes review proceedings, post grant review proceedings and derivation proceedings may be submitted via e-mail addressed to patent_trial_rules@uspto.gov.  The message should be sent so that it is received on Monday, April 9, 2012 prior to midnight Eastern Standard Time.

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