You are here: Ed9 10.2019 Guidebook » Supplement: New Trial Proceedings
New Trial Proceedings Final Rules
Differences between the Final Rule and the Proposed Rule
The major differences between the rules as adopted in this final rule and the proposed rules include:
- The final rule clarifies that the one year period for completing an inter partes or post-grant review may be adjusted by the Board in the case of joinder.
- The final rule clarifies that a petitioner must certify that it is not estopped from requesting an inter partes or post-grant review for the challenged claims, as opposed to the patent.
- The final rule eliminates the requirement that the petitioner must contact the Board to discuss alternate modes of service when the petitioner cannot effect service of the petition for inter partes, post-grant and covered business method patent reviews.
- Instead, the final rule further clarifies that:
- upon agreement of the parties, service may be made electronically,
- personal service is not required, and
- service may be by EXPRESS MAIL® or by means at least as fast and reliable as EXPRESS MAIL®
- Instead, the final rule further clarifies that:
- The time period for filing a patent owner preliminary response for inter partes, post-grant and covered business method patent reviews is extended from two months to three months.
- Likewise, the default time period for filing a patent owner response is extended from two months to three months.
- With respect to motions to amend challenged claims, the final rule clarifies that a patent owner may file one motion to amend but only after conferring with the Board, and it must be filed no later than the filing of a patent owner response for inter partes, post-grant and covered business method patent reviews.
- The final rule provides that an additional motion to amend may be authorized during inter partes, postgrant and covered business method patent reviews when there is a good cause showing or a settlement.
- The final rule clarifies that a reasonable number of substitute claims is presumed to be one substitute claim per challenged claim, which may be rebutted by a demonstration of need.
- The final rule further clarifies that a motion to amend may be denied where:
- (1) The amendment does not respond to a ground of unpatentability, or
- (2) the amendment seeks to enlarge the scope of the claims of the patent or introduce new subject matter.
- The final rule also clarifies that an additional motion to amend may be authorized when there is a good cause showing or a joint request of the petitioner and the patent owner to materially advance a settlement.
- The final rule provides that in determining whether to authorize such an additional motion to amend, the Board will consider whether a petitioner has submitted supplemental information after the time period set for filing a motion to amend.
- For joinder, the final rule clarifies that a joinder may be requested by a patent owner or petitioner during inter partes, post-grant or covered business method patent reviews, but provides that such a request must be filed, as a motion, no later than one month after institution of any review for which joinder is requested.
- With respect to inter partes reviews, the time period set forth in § 42.101(b) does not apply when the petition is accompanied by a request for joinder.
- With respect to inter partes reviews, the time period set forth in § 42.101(b) does not apply when the petition is accompanied by a request for joinder.
- As to filing a supplemental information during inter partes, postgrant and covered business method patent reviews, the final rule clarifies that a request for the authorization to file a motion to submit supplement information is made within one month of the date the trial is instituted, and the information must be relevant to a claim for which the trial has been instituted.
- A petitioner who seeks to submit late information, or information that is not relevant to a claim under review, will be required to show why the information reasonably could not have been earlier obtained, and that consideration of the information would be in the interests-of-justice.
- For covered business method patent reviews, the final rule defines the term ‘‘charged with infringement’’ to mean ‘‘a real and substantial controversy regarding infringement of a covered business method patent such that the petitioner would have standing to bring a declaratory judgment action in Federal court’’.
- The final rule clarifies that a petitioner may challenge a claim based on the specific statutory grounds permitted.
